NOVAPLAST CORPORATION v. INPLANT, LLC
2:20-cv-07396
D.N.J.Jul 26, 2023Background
- NovaPlast owns U.S. Patent No. 10,105,213, which claims a flexible, funnel-like delivery system for inserting prosthetic implants through a surgical opening. The main disputes concern whether claimed “first fasteners” must be plural and whether the fasteners permit user-adjustable distal openings.
- Claims at issue: claim 1 (uses phrase “at least one first fastener” and recites that engagement with a second fastener forms a “predetermined size distal opening”) and claim 5 (adds that “each of the at least one first fastener” has a channel and the second fastener has a shoulder received in the channel of “at least one of the first fasteners”).
- During prosecution the original claims referred to a “plurality of first fasteners.” After rejections over prior art (notably Guetty and Preissman/DiPoto), the applicant amended claims to replace “plurality” with “at least one” and added a closed proximal end to distinguish Guetty.
- Defendants (Inplant and Proximate) asked the court to construe several terms: (1) “at least one first fastener,” (2) “each of the at least one first fastener,” (3) “the first fasteners,” (4) “based on the engagement of the second fastener with the at least one first fastener,” and (5) “formed on the elongated member.” A Markman hearing was held.
- The Court (McNulty, J.) applied ordinary-meaning principles, intrinsic evidence, and prosecution-history analysis and (a) adopted the plain meaning that “at least one” means one or more in claim 1, (b) concluded claim 5 requires multiple (plural) first fasteners, (c) read the “based on the engagement…” phrase to mean engagement with one or more first fasteners, and (d) declined to construe “formed on the elongated member” to require being integrally formed (it does not exclude fasteners merely affixed).
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Meaning of “at least one first fastener” (claim 1) | Plain and ordinary meaning: “one or more” | Must require plural (multiple spaced) because the specification and prosecution repeatedly used “plurality” to distinguish prior art | Held: "at least one first fastener" means one or more first fastener(s) (plain meaning controls) |
| “each of the at least one first fastener” & “the first fasteners” (claim 5) | No construction; ordinary meaning applies | These phrases require multiple first fasteners (claim 5 intended to cover adjustable, multi-fastener embodiments) | Held: claim 5 requires plurality — “each of the one or more first fasteners” and “the first fasteners” means the more-than-one first fasteners; claim 5 covers only multiple-fastener embodiments |
| “based on the engagement of the second fastener with the at least one first fastener” (claim 1) | Plain meaning: engagement with one or more fasteners forms a predetermined-sized distal opening; does not require user-adjustable sizing | Phrase requires engagement among multiple first fasteners and that engagement perform the function of defining/adjusting the distal opening size | Held: Means engagement of the second fastener with the one or more first fastener(s); claim 1 is not limited to only adjustable/multi-fastener embodiments |
| “formed on the elongated member” (claim 1) | No special construction; plain meaning (made or positioned on) | Requires being integrally formed with the elongated member (not merely affixed) | Held: No requirement of being integrally formed; "formed on" has its plain meaning and does not exclude fasteners that are merely affixed |
Key Cases Cited
- Amgen Inc. v. Amneal Pharms. LLC, 945 F.3d 1368 (Fed. Cir. 2020) (describing two-step infringement framework and claim-construction principles)
- Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (intrinsic evidence is primary guide to claim meaning)
- Teva Pharms. USA, Inc. v. Sandoz, Inc., 574 U.S. 318 (2015) (court may rely on subsidiary factual findings when construing claims)
- Rhine v. Casio, Inc., 183 F.3d 1342 (Fed. Cir. 1999) ("at least one" means one or more)
- GE Lighting Sols., LLC v. AgiLight, Inc., 750 F.3d 1304 (Fed. Cir. 2014) (lexicography/disavowal standards are exacting)
- Liebel–Flarsheim Co. v. Medrad, Inc., 358 F.3d 898 (Fed. Cir. 2004) (do not import limitations from a single preferred embodiment)
- Hakim v. Cannon Avent Grp., PLC, 479 F.3d 1313 (Fed. Cir. 2007) (prosecution statements can limit claim scope where disclaimer is clear)
- Apple Inc. v. MPH Techs. Oy, 28 F.4th 254 (Fed. Cir. 2022) (presumption that plural terms refer to two or more items)