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Justin E. Gray

IP Litigation Attorney at Foley & Lardner LLP

Former Adjunct Professor at Northwestern University School of Law

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Wednesday
Aug222012

Federal Circuit Declines to Import Limitations From Figures Into Claims, Reverses District Court

Jang v. Boston Scientific Corp. (Fed. Cir. Aug. 22, 2012) (nonprecedential)

In this case, the Federal Circuit reversed the district court's construction of the term "connecting strut column" as improperly importing a limitation from the specification into the claims.  The patents at issue related to improved coronary stents for use in balloon angioplasty catheterization procedures.

At issue was whether a "connecting strut" of the claimed stent was required by the patents to be "unattached" from other connecting struts and instead connect only to the "expansion elements" of the claimed stent, or whether the connecting struts could be attached to one another.

The district court determined that the connecting struts needed to be unattached from one another and granted judgment in the defendants' favor.  The Federal Circuit remanded asking the district court to specify "how the claim constructions would render the accused products infringing or noninfringing" so that it would be possible "for the appellate court to ascertain the basis for the judgment challenged on appeal."  The district court then provided the requested explanation and the district court's subsequent order was appealed to the Federal Circuit.

On appeal, the plaintiff argued that there was no language in the claims, specifications, or file histories in the patents-in-suit to suggest that the connecting struts were required to be unattached to one another and that the district court erroneously imported limitations from the patent figures into the claims.  The defendants argued that the patent specifications did not present "merely a series of 'illustrative drawings,' as Appellant suggests; rather ... the totality of the patents' disclosure" suggests that the invention required unattached connecting struts, relying on ICU Medical, Inc. v. Alaris Medical Systems.

The Federal Circuit agreed with the plaintiff that the "district court impermissibly imported the 'unattached' limitation into the claims based on the examples in the specification."  The Court explained that while the examples presented in the patent specifications "do show only connecting strut columns with unattached connecting struts, the specification do not require the connecting struts to be unattached" and noted that the Federal Circuit has "repeatedly held that the fact that the specification describes only a single embodiment, standing alone, is insufficient to limit otherwise broad claim language."  The Court went on to distinguish ICU Medical, stating that the "only described function" of the connecting strut column can be performed "whether the connecting struts are attached to one another or not."  The Court then reversed the district court's construction and remanded for further proceedings.