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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 Affirms Claim Construction That Excludes Embodiment From Claim

Baran v. Medical Device Technologies, Inc. (Fed. Cir. Aug. 12, 2010)

In this case, the Federal Circuit affirmed the district court's claim construction that excluded an embodiment from the claim.  The patent at issue concerned automated biopsy instruments.

The district court construed two claim terms, "detachable" and "releasably", to require "separation without loss or damage."  The patent disclosed both a reusable embodiment and a single-use embodiment, describing the reusable embodiment as being "detachably engaged" whereas the single-use embodiment was "adhesively bonded."  On appeal, the plaintiff argued for constructions that did not include the "without loss or damage" condition, arguing that the construction excluded the single-use embodiment from the claim and therefore precluded an infringement claim against a single-use device. 

The Federal Circuit found that the patentee distinguished the single-use embodiment from the reusable embodiment in the specification through the different language used to describe the embodiments.  "The patentee used the term 'detachably' in the specification to draw a direct contrast between the removable components of the reusable embodiment and the adhesively bonded components of the single-use embodiment.  That usage effectively concedes that adhesively bonded components-including the single-use embodiment-are not 'detachable' components within the meaning of the patent."

The plaintiff also argued on appeal that the district court's claim construction improperly excluded a preferred embodiment.  To this, the Federal Circuit explained that "[i]t is not necessary that each claim read on every embodiment.  In this instance, while claim 2 reads on only the reusable embodiment, a different claim of the [patent] reads on both the single-use and the reusable embodiments."