SUFFICIENT EVIDENCE OF AFFECT ON THE BASIC AND NOVEL CHARACTERISTICS AVOIDED INFRINGEMENT OF “CONSISTING ESSENTIALLY OF” CLAIM

Depuy Mitek, Inc., v. Arthrex, Inc., [2008-1173] (October 30, 2008) [LINN, Newman, O’Grady] NON-PRECEDENTIAL The Federal Circuit affirmed a finding of non-infringement of U.S. Patent No. 5,314,446.
DISCUSSION: The parties stipulated that infringement of the asserted claims would rise or fall with infringement of claim 1, and that the accused product contained every recited limitation of that claim. The only question for the jury to resolve was whether a silicone coating added to the accused product — an element in addition to those listed in the claim — materially affected the basic and novel properties of the invention and thus took the accused structure out of the scope of coverage of the claims.
The Federal Circuit said that because claim 1 uses the transitional phrase, “consisting essentially of,” it covers products or devices which include the listed elements, as well as unlisted elements, so long as the unlisted elements “do not ‘materially affect the basic and novel properties of the invention.’” The district court defined the basic and novel characteristics of the invention of the ’446 patent as: (1) a surgical suture, (2) composed of two dissimilar yarns from the lists in Claim One, (3) where at least one yarn from the first set is in direct intertwining contact with the yarn from the second set, (4) so as to improve pliability and handleability without significantly sacrificing the physical properties of the constituent elements of the suture.
The Federal Circuit found that defendant presented evidence at trial that that the silicone coating permeated the surface of the suture, reaching the braid, and that this materially improved the handleability and pliability of the suture by lubricating the interlocking yarns. The Federal Circuit further found that the defendant presented evidence at trial that, even if it the coating did not penetrate the surface, it still materially affected the physical properties of the suture, both positively and negatively. The Federal Circuit district court’s denials of Mitek’s renewed motion for judgment as a matter of law and motion for new trial.