Federal Circuit Declines to Consider Claim Construction Arguments

Fresenius USA, Inc. v. Baxter Int'l, Inc. (Fed. Cir. Sept. 10, 2009)

In this case, the district court (Northern District of California) entered final judgment that the plaintiffs infringed claims of three patents asserted by the defendants.  Among the issues appealed were two claim constructions (along with the grant of JMOL, entry of a permanent injunction, royalty award, and finding of invalidity for one of the patents).  The Federal Circuit, in an opinion by Judge Gajarsa, declined to consider the claim construction arguments on appeal.  Ultimately, the appeal was affirmed in part, reversed in part, vacated in part, and remanded for further proceedings.

The patents at issue related to hemodialysis machines integrated with a touch screen user interface.  The plaintiffs appealed the construction of two claim terms: "means for controlling a dialysate parameter" and "time variable profile."

The Federal Circuit declined to consider plaintiffs' claim construction arguments as the plaintiffs "failed to clearly explain what result would occur if this court adopted [their] proposed claim construction … [and the plaintiffs] gave this court little guidance and cited to no record support regarding why a modified claim construction would affect the infringement judgment, the validity judgment, or both."  Citing to its prior decision in Jang v. Boston Sci. Corp., the Court found that for this reason alone it could decline to consider the claim construction arguments.

Further, the Court explicitly disagreed with the plaintiffs that a modified claim construction would affect the infringement judgment, stating that the plaintiffs "unconditionally stipulated [to the district court] that [their] accused infringing device contains each and every element of the claims … [t]hat stipulation in no way stated or indicated that it was conditioned upon the district court's claim construction."  Further, the Court stated that it did not rely on either of the contested claim terms for holdings adverse to the plaintiffs regarding invalidity.

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