Regents of University of Minnesota v. AGA Medical Corp., 835 F. Supp. 2d 711

The University sues AGA for alleged infringement of U.S. Patent Nos. 6,077,281 ('281) and 6,077,291 ('291) relating to heart-defect occluders.
The court granted summary judgment that the '291 patent is not infringed and that the '281 claims are invalid on anticipation and indefiniteness, with enablement arguments excluded as untimely.
The court concluded that the University cannot recover against AGA on the '281 or '291 patents and dismissed AGA’s counterclaims as moot.
The '281 patent claims a two-part, self-expanding occluder with two communicating members that connect at a central portion and can be deployed through a catheter.
Two prior devices—the King device (King 3,874,388) and the Lock device (Lock article)—were analyzed for anticipation, with the King device found to anticipate claims 1 and 5 but not claim 4, and the Lock device found to anticipate claims 1, 4, and 5.
The court reaffirmed claim constructions including ‘tautly holding,’ ‘in communication with,’ and the means-plus-function interpretation of ‘self-expanding structure.’

Issue	Plaintiff's Argument	Defendant's Argument	Held
Anticipation of claims 1, 4, 5 of the '281 patent	AGA contends King and Lock anticipate all asserted claims of '281.	AGA argues both devices disclose all claim elements, including the means-plus-function structure and central communication.	Claims 1 and 5 anticipated; claim 4 not anticipated.
Enablement of the '281 patent	Enablement argument that frameless embodiment is not enabled.	Enablement supported by diagrams and expert testimony before discovery end.	Enablement evidence excluded as untimely; enablement defense not admissible.
Indefiniteness of the '281 claims	Claim 1 'a self-expanding structure exhibiting a spring-like behavioural component' is insolubly ambiguous.	Court previously construed the term; remaining ambiguity limited.	Claim 1 invalid as indefinite; dependent claims likewise invalid.
Effect of court’s constructions on validity and dismissal	If constructions differ, validity could be affected or the case proceed.	Revised construction favors validity determinations and supports dismissal of remaining counterclaims as moot.	Judgment entered: '281 invalid; counterclaims moot; '291 remains dismissed earlier.

Perricone v. Medicis Pharm. Corp., 432 F.3d 1368 (Fed. Cir. 2005) (anticipation requires a single reference discloses all claim limitations)
Bristol-Myers Squibb Co. v. Ben Venue Labs., Inc., 246 F.3d 1368 (Fed. Cir. 2001) (anticipation is a factual question and must be proven by clear and convincing evidence)
Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313 (Fed. Cir. 2002) (what a prior art reference discloses in anticipation is a factual determination)
Markman Order, — (—) (court construction of claim terms; binding for proceedings)
Exxon Research & Eng’g Co. v. United States, 265 F.3d 1371 (Fed. Cir. 2001) (definiteness requires claims to be reasonably understood)