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Justin E. Gray

Partner at Eversheds Sutherland (US) LLP

Former Adjunct Professor at Northwestern University School of Law

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Federal Circuit Panel Disagrees Concerning Whether Claim Required Two Distinct Structures

Becton, Dickinson and Company v. Tyco Healthcare Group, LP (Fed. Cir. Jul. 29, 2010)

In this case, the Federal Circuit found that the patent at issue required a spring means that was a distinct structural element from a claimed hinged arm.  The patent at issue related to a safety needle designed to prevent accidental needle stick injuries.  The district court construed the claim element "spring means connected to said hinged arm for urging said guard along said needle cannula toward" the tip of the needle as requiring that "the hinged arm is connected to a spring that moves the guard along the cannula toward" the tip of the needle.  The district court later held that its claim construction did not require a spring means that was a distinct structural element from the hinged arm.

The Federal Circuit disagreed, stating that "[t]he unequivocal language of the asserted claims … requires a spring means that is separate from the hinged arm."  The court stated that "[w]here a claim lists elements separately, 'the clear implication of the claim language' is that those elements are 'distinct component[s]' of the patented invention."  The court then found there was "nothing in the asserted claims to suggest that the hinged arm and the spring means can be the same structure" and the specification "confirms that the spring means is a separate element from the hinged arm."  The court went on to explain that a proposed construction allowing the spring means and the hinged arm to be the same structure would render the asserted claims "nonsensical" and "clearly invalid as obvious over the prior art", as well as rendering the spring means limitation "functionally meaningless."

Judge Gajarsa wrote a dissenting opinion where he faulted the majority for failing to conduct a claim construction analysis to determine whether the spring means limitation should be construed as a "means plus function" limitation, stating that "the majority puts the cart before the horse by concluding that the claim language covers only devices having two separate structures, but fails to undertake a proper claim construction analysis."  Judge Gajarsa performed such an analysis and determined that the spring means limitation should not be construed as a means plus function limitation.  He also disagreed with the majority's conclusion that the claim required two separate structures, stating that such a conclusion was "not supported anywhere in the intrinsic or extrinsic record" and "it is well established that a single structure in an accused device may satisfy two different claim limitations … [i]n the absence of evidence requiring two structures, the claim language must be interpreted broadly to read upon an accused product containing the two claim terms, regardless of whether those elements are encompassed in one or two structures."