STRUCTURES NOT CORRESPONDING TO THE MEANS ELEMENT ARE STILL RELEVANT TO INFRINGEMENT

Applied Medical Resources Corporation v. United States Surgical Corporation, [2008-1416] (February 24, 2009) [PROST, Mayer, Gajarsa] The Federal Circuit affirmed the denial of a new trial, finding that the jury verdict was not inconsistent with the prior appeal.
DISCUSSION: US Surgical previously won summary judgment that its product did not operate the same way, and thus did not meet a means plus function limitation in Applied Medical’s patent, but the Federal Circuit reversed. At trial on remand, US Surgical repeated its argument that its device did not function in the same way, and thus did not meet the means plus function limitation, and the jury found no infringement. Applied Medical moved for JMOL or a new trial, arguing that the portions of the structure on which US Surgical based its arguments were not part of the structure identified in the court’s construction of element, and thus they are legally irrelevant to the “way” in which that structure performs the claimed functions. When the district court identified the structure that corresponds to the function, which was binding upon the parties, it did not identify portions of the value on which US Surgical based its argument.
The Federal Circuit found that the prior appeal did not hold that the way the non-identified parts function was improper, but that there were questions of material fact that precluded summary judgment, and thus the prior appeal did not prevent US Surgical from making the same summary judgment arguments to the jury. The Federal Circuit noted that nowhere in its discussion did the majority set forth a legal rule that unidentified structure was legally irrelevant to the “way” analysis.
The Federal Circuit conceded that the line between permissibly finding aspects of the claimed invention relevant to the “way” the identified structure functions and impermissibly requiring those “functions” as part of the means-plus-function limitation may not always be precisely defined, but said that such a line is necessary if to give independent meaning to both the “way” and “function” prongs of the equivalency test.
Regardless of the mandate, Applied Medical argues that this court’s precedent clearly establishes that parts of an embodiment that are not identified during claim construction as corresponding to the claimed functions cannot be relevant to the “way” analysis. While the Federal Circuit said it appreciated Applied Medical’s concerns about a roving “way” analysis that permits defendants to confuse or mislead the jury by seizing upon structural differences that are in no way related to the means-plus-function limitation, it concluded that U.S. Surgical’s references to structures not identified in the claim construction comported with its precedent. The Federal Circuit said the cases cited by Applied Medical did not address whether additional parts of the claimed invention can be relevant to the “way” in which the identified structure functions. The Federal said that they could.