Bruce Saffran v. Johnson & Johnson
712 F.3d 549
Fed. Cir.2013Background
- Cordis appeals a final district court judgment in favor of Saffran on the '760 patent infringement.
- The '760 patent covers a minimally porous sheet device to restrain macromolecules and deliver treating materials at a tissue injury site.
- Cordis’s Cypher drug-eluting stents were accused of infringing claims 1-3, 6, 8, 9, 11, 13, 15, and 17 of the '760 patent.
- The district court conducted Markman proceedings and construed 'device' as non-limiting preamble language, and 'minimally porous' as substantially impermeable; 'release means' was treated as a §112, ¶6 means-plus-function limitation.
- The jury found infringement and damages; the court later denied JMOL on invalidity and infringement, but granted JMOL on willfulness; prejudgment interest followed, totaling over $593 million.
- This court reverses, holding the district court erred in claim construction, and Cordis is entitled to noninfringement as a matter of law.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Proper meaning of 'device' in the claims | Saffran: device broad; not limited to a sheet. | Cordis: device is a continuous sheet; excludes stents with open holes. | Device is a continuous sheet; excludes stents with open mesh holes. |
| Proper meaning of 'release means' in the claims | Saffran: broad category 'chemical bonds' and linkages. | Cordis: limited to hydrolyzable bonds as the corresponding structure. | Release means is a means-plus-function limitation; corresponding structures are hydrolyzable bonds. |
| Infringement under correct constructions | Cordis products infringe under broadened device and release means. | Cordis products lack a continuous sheet and lack hydrolyzable-bond attachment of drug. | Under correct constructions, Cordis does not infringe; noninfringement as a matter of law. |
Key Cases Cited
- Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996) (claim construction is a judge-made, not a jury, issue)
- Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc; caution against limiting claim terms to preferred embodiments)
- B. Braun Med., Inc. v. Abbott Labs., 124 F.3d 1419 (Fed.Cir.1997) (means-plus-function requires linking structure to function in specification)
- Wenger Mfg., Inc. v. Coating Machinery Systems, Inc., 239 F.3d 1225 (Fed.Cir.2001) (claim differentiation cannot broaden a means-plus-function beyond disclosed structures)
- Med. Inst. & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205 (Fed.Cir.2003) (§ 112 ¶ 6 requires a link between function and corresponding structure)
- Storage Tech. Corp. v. Cisco Sys., Inc., 329 F.3d 823 (Fed.Cir.2003) (prosecution disclaimer requires clear and unambiguous disavowal of claim scope)
- Elekta Instrument S.A. v. OURal Scientific Inti, Inc., 214 F.3d 1302 (Fed.Cir.2000) (special definition must be clearly stated in the patent)