IP News

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Federal Circuit Reverses $593 Million Stent Verdict

On April 4, 2013, the Federal Circuit panel of Judges Alan D. Lourie, Kimberly A. Moore and Kathleen M. O'Malley issued its opinion in Saffran v. Johnson & Johnson, No. 12-1043, reversing a $593 million verdict an Eastern District of Texas jury awarded to Saffran. The Federal Circuit held that Judge T. John Ward incorrectly construed the claims of the asserted patent, and under a correct construction the defendants were entitled to a judgment of non-infringement. Slip Op. at 3. Saffran's patent, according to the Federal Circuit, “primarily describes the invention in terms of a strategy for treating serious bone fractures, known as complex or comminuted fractures, where the bone has been shattered into numerous fragments.” Id. The Saffran patent claims to improve treatment of such injuries, and discloses “a unique method of fracture stabilization and a means to restrain interfragmentary macromolecules using a single, flexible minimally porous sheet.” Id. at 4. The single-layered sheet “serves as a selective barrier that blocks macromolecules and larger particles, such as tissue fragments and cells, yet contains micropores sized to allow free passage for small molecules (e.g., water).” Id. According to the specification, the sheet can also be configured to deliver a drug or other therapeutic agent. Id. at 6.

Saffran claimed that certain drug eluting stents made by Cordis Corporation infringed his patent. Id. at 12. During the claim construction phrase, Judge Ward construed the term “device” as non-limiting preamble language, and also construed the term “minimally porous to macromolecules” as meaning “substantially impermeable to macromolecules. Id. at 12-13. Judge Ward also construed the term “means for release of at least one treating material in a directional matter” as a means-plus-function limitation, and held that the function is “to release a drug preferentially toward the damaged tissue” and the structure is “chemical bonds and linkages.” Id. at 13 (internal citations omitted).

On appeal, the Federal Circuit held that the term “device” was limiting, and should be limited to a “continuous sheet.” Id. at 16. Saffran had made multiple statements during prosecution of his patent that distinguished it over the prior art due to the presence of a sheet. Id. The Federal Circuit found that the specification also supports its conclusion, consistently describing the disclosed “device” as a sheet, “whether wrapped around a stent, affixed to a fractured bone, or applied as a spray.” Id. at 18. The Federal Circuit also reversed Judge Ward's construction of the “release means” term, holding that his identification of structure was faulty. The panel held that the claim had been construed too broadly, and that the only structure disclosed in the patent for performing the claimed drug release function is a hydrolysable bond. “The patent does not link any additional structures to the release function with sufficient specificity to satisfy ' 112 ' 6.” Id. at 22. Saffran attempted to rely on claim differentiation because his patent had a dependent claim covering drug release “by lysis of a chemical bond.” Id. at
23-24. However, the Federal Circuit rejected this argument, holding that “a patentee cannot rely on claim differentiation to broaden a means-plus-function limitation beyond those structures specifically disclosed in the specification.” Id. at 24.

Using the correct constructions, the Federal Circuit held that Cordis' stents do not infringe the Saffran patent. The Cordis stents do have struts that are coated with a thin layer of polymer, “but that layer is akin to paint on a chain link fence, not a continuous sheet wrapped around the mesh, and open holes remain between the struts of the accused devices.” Id. at 25. In addition, Cordis did not satisfy the “release means” claim element because the polymer in Cordis' stents is not attached by hydrolysable bonds. Id. at 26.

Apple Avoids Infringement, Says Delaware Judge

On April 9, 2013, Judge Sue L. Robinson of the District of Delaware issued an opinion in Golden Bridge Technology, Inc. v. Apple Inc., et al., No. 10-428, granting Apple's summary judgment of non-infringement. One of Golden Bridge's asserted patents, dealing with wireless telecommunication technology, survived an ex parte re-examination at the USPTO. Golden Bridge argued that Apple's devices infringe because “they establish communication with a base station in compliance with the 3G Partnership Project (“3GPP”) system[.]” Slip Op. at 7.

Judge Robinson held that there could be no infringement of any asserted claim because the accused products did not “spread the access preamble” as required by the claims. Id. at 15. “[Golden Bridge] concedes that its evidence is limited to showing the 'spreading' of signatures that allegedly takes place during the generation of preambles; it is unrelated to what happens after a preamble is generated.” Id. at 17 (emphasis in original). Because the evidence submitted by Golden Bridge did not show that the accused devices “spread” preambles prior to transmission, there could be no infringement. Id.

Jeffrey S. Ginsberg is a partner, and Ksenia Takhistova and Joseph Mercadante are associates in the New York office of Kenyon & Kenyon LLP.

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ITC Reverses Initial Determinations of Invalidity and Non-Infringement in Wiper Blade Case

On April 9, 2013, the International Trade Commission issued a Notice of Commission Decision in In the Matter of Certain Wiper Blades, Inv. No. 337-TA-816, reversing two initial determinations (“IDs”) of Chief Administrative Law Judge Charles E. Bullock (“ALJ”), and remanding the investigation for further proceedings. The complainant, Robert Bosch LLC, sued a number of wiper blade manufacturers and distributors in October 2011, asserting nine patents covering various aspects of beam-type wiper blade technology developed by Bosch.

On Aug. 31, 2012, the ALJ issued a claim construction Order, and on Oct. 2, 2012, he issued two IDs granting respondents' motions for Summary Determination. The first ID found that claims from four asserted patents were invalid for failing to satisfy the definiteness requirements of 35 U.S.C. ' 112, and the second ID found that the accused products sold by a group of respondents (“the Pylon respondents”) did not infringe any of the claims from five asserted patents. Upon review, the Commission reversed all indefiniteness findings, determining that “the respondents have not provided clear and convincing evidence that any of the claim terms at issue are invalid as indefinite under 35 U.S.C. ' 112(b).” Slip Op. at 3. The Commission then construed the indefinite terms, mostly agreeing to the constructions proposed by Bosch. The Commission also reversed the ALJ's narrow construction of the term “support element.” The ALJ construed this term to exclude the support bracket structure ordinarily found in conventional wiper blades. The Commission found “no clear disavowal of brackets as to the 'support element' limitation in the asserted patents at issue” and construed “support element” to have a plain and ordinary meaning. Id. at 4. Because the ALJ's finding of no infringement by the Pylon respondents was based on the erroneous claim construction, the Commission reversed the non-infringement ID.

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Federal Circuit Reverses $593 Million Stent Verdict

On April 4, 2013, the Federal Circuit panel of Judges Alan D. Lourie, Kimberly A. Moore and Kathleen M. O'Malley issued its opinion in Saffran v. Johnson & Johnson, No. 12-1043, reversing a $593 million verdict an Eastern District of Texas jury awarded to Saffran. The Federal Circuit held that Judge T. John Ward incorrectly construed the claims of the asserted patent, and under a correct construction the defendants were entitled to a judgment of non-infringement. Slip Op. at 3. Saffran's patent, according to the Federal Circuit, “primarily describes the invention in terms of a strategy for treating serious bone fractures, known as complex or comminuted fractures, where the bone has been shattered into numerous fragments.” Id. The Saffran patent claims to improve treatment of such injuries, and discloses “a unique method of fracture stabilization and a means to restrain interfragmentary macromolecules using a single, flexible minimally porous sheet.” Id. at 4. The single-layered sheet “serves as a selective barrier that blocks macromolecules and larger particles, such as tissue fragments and cells, yet contains micropores sized to allow free passage for small molecules (e.g., water).” Id. According to the specification, the sheet can also be configured to deliver a drug or other therapeutic agent. Id. at 6.

Saffran claimed that certain drug eluting stents made by Cordis Corporation infringed his patent. Id. at 12. During the claim construction phrase, Judge Ward construed the term “device” as non-limiting preamble language, and also construed the term “minimally porous to macromolecules” as meaning “substantially impermeable to macromolecules. Id. at 12-13. Judge Ward also construed the term “means for release of at least one treating material in a directional matter” as a means-plus-function limitation, and held that the function is “to release a drug preferentially toward the damaged tissue” and the structure is “chemical bonds and linkages.” Id. at 13 (internal citations omitted).

On appeal, the Federal Circuit held that the term “device” was limiting, and should be limited to a “continuous sheet.” Id. at 16. Saffran had made multiple statements during prosecution of his patent that distinguished it over the prior art due to the presence of a sheet. Id. The Federal Circuit found that the specification also supports its conclusion, consistently describing the disclosed “device” as a sheet, “whether wrapped around a stent, affixed to a fractured bone, or applied as a spray.” Id. at 18. The Federal Circuit also reversed Judge Ward's construction of the “release means” term, holding that his identification of structure was faulty. The panel held that the claim had been construed too broadly, and that the only structure disclosed in the patent for performing the claimed drug release function is a hydrolysable bond. “The patent does not link any additional structures to the release function with sufficient specificity to satisfy ' 112 ' 6.” Id. at 22. Saffran attempted to rely on claim differentiation because his patent had a dependent claim covering drug release “by lysis of a chemical bond.” Id. at
23-24. However, the Federal Circuit rejected this argument, holding that “a patentee cannot rely on claim differentiation to broaden a means-plus-function limitation beyond those structures specifically disclosed in the specification.” Id. at 24.

Using the correct constructions, the Federal Circuit held that Cordis' stents do not infringe the Saffran patent. The Cordis stents do have struts that are coated with a thin layer of polymer, “but that layer is akin to paint on a chain link fence, not a continuous sheet wrapped around the mesh, and open holes remain between the struts of the accused devices.” Id. at 25. In addition, Cordis did not satisfy the “release means” claim element because the polymer in Cordis' stents is not attached by hydrolysable bonds. Id. at 26.

Apple Avoids Infringement, Says Delaware Judge

On April 9, 2013, Judge Sue L. Robinson of the District of Delaware issued an opinion in Golden Bridge Technology, Inc. v. Apple Inc., et al., No. 10-428, granting Apple's summary judgment of non-infringement. One of Golden Bridge's asserted patents, dealing with wireless telecommunication technology, survived an ex parte re-examination at the USPTO. Golden Bridge argued that Apple's devices infringe because “they establish communication with a base station in compliance with the 3G Partnership Project (“3GPP”) system[.]” Slip Op. at 7.

Judge Robinson held that there could be no infringement of any asserted claim because the accused products did not “spread the access preamble” as required by the claims. Id. at 15. “[Golden Bridge] concedes that its evidence is limited to showing the 'spreading' of signatures that allegedly takes place during the generation of preambles; it is unrelated to what happens after a preamble is generated.” Id. at 17 (emphasis in original). Because the evidence submitted by Golden Bridge did not show that the accused devices “spread” preambles prior to transmission, there could be no infringement. Id.

Jeffrey S. Ginsberg is a partner, and Ksenia Takhistova and Joseph Mercadante are associates in the New York office of Kenyon & Kenyon LLP.

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