Lead Opinion
Opinion for the court filed by Circuit Judge MAYER. Dissenting opinion filed by Circuit Judge GAJARSA.
Tyco Healthcare Group, LP (“Tyco”) appeals a judgment of the United States District Court for the District of Delaware entered after a jury determined that Tyco’s Monoject Magellan™ safety needles and blood collection devices literally infringed claims 1-4, 6, 12, 13, 15, 24 and 27 of U.S. Patent No. 5,348,544 (the “'544 patent”). Because we conclude that the district court incorrectly construed the “spring means” limitation of the asserted claims and erred in denying Tyco’s motion for judgment as a matter of law (“JMOL”), we reverse.
Background
Becton, Dickinson and Company (“Becton”) is the assignee of the '544 patent, which is directed toward a safety needle designed to prevent accidental needle stick injuries. The safety shield, or needle guard, of the patented invention is initially positioned at the base of the needle, next to the needle hub. This is called the “first position” and is shown in figure 2 of the '544 patent.
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The guard is mounted on or close to the needle cannula and is attached to the needle hub by a hinged arm. When the guard is in the first position, the hinged arm is folded. When the needle has been removed from a patient, the health care worker pushes the hinged arm forward, causing the hinged arm to unfold and the guard to move along the needle cannula toward the tip of the needle. When the guard covers the needle tip, it is said to be in its “second position” as shown in figure 4.
To facilitate the movement of the guard toward the needle tip, the '544 patent discloses a “spring means” for “urging [the] guard along [the] needle cannula.” The specification describes two embodiments in which a spring moves the guard down the needle cannula. The specification does not attribute any movement of the guard to the hinged arm of the safety needle.
On December 23, 2002, Becton filed suit against Tyco, alleging infringement of the '544 patent by Tyco’s Monoject Magellan™ safety needles and blood collection devices. Becton subsequently answered Tyco’s first set of interrogatories, including interrogatory 3, which called for an infringement claim chart “fully explaining] how each claim element is met either literally or under the doctrine of equivalents in each Tyco product accused of infringement.” In response, Becton identified the living hinges in Tyco’s accused devices as satisfying the “spring means” limitation of asserted claims 1 and 24 and stated that “[o]nce released, the spring means urges the guard along the needle cannula toward” the tip of the needle. Later, in updated infringement charts served on Tyco just prior to the close of fact discovery, Becton reiterated its assertion that “[o]nce released, the spring means urges the guard along the needle cannula” toward the needle tip.
After the close of fact discovery, Becton issued its only expert report on infringement. Becton’s expert, Charles A. Garris, Jr., explained his theory as to how the hinges in the hinged arm of Tyco’s accused devices functioned as springs:
The hinged arm [in Tyco’s accused products] is ... folded and assembled with the other components of the safety assembly. I expect to explain that folding of the hinged arm imparts stress to the hinge that results in a certain amount of stored energy. In the accused Tyco Monoject Magellan™ devices, the force of this stored energy is initially restrained by a latching mechanism. Once unlatched, the stored energy is released, causing the safety guard to be urged (i.e., moved) along the needle cannula toward the tip of the needle.
On May 3, 2004, Tyco moved for summary judgment of non-infringement, arguing that the spring means limitation of the asserted claims required a spring separate from the hinged arm structure. The district court denied this motion, however, rejecting Tyco’s argument that a proper construction of the spring means limitation requires “a separate spring [which] must move the guard along the cannula toward the second position.” Becton, Dickinson & Co. v. Tyco Healthcare Group, LP, No. 02-1694 GMS,
On October 26, 2004, a jury returned a verdict finding literal infringement by both
From the outset, [this] case was postured on the assertion that Tyco’s Monoject Magellan devices infringed the “spring means” limitation of the ['544] patent because, after the devices are unlatched, the hinged arms move the guard toward the cannula of the needle. Dr. Garris’ expert statement, [Becton’s] summary judgment motion, and [Becton’s] pretrial memorandum in support of its claim of infringement and for damages, all make clear that the “after unlatching” theory was the only basis for Tyco’s alleged infringement.
Becton, Dickinson & Co. v. Tyco Healthcare Group, LP, No. 02-1694 GMS,
During trial, however, Becton reversed course, arguing that the living hinges in the hinged arm moved the guard before the hinged arm was unlatched. Id. at *12,
In January 2007, prior to the start of the second trial, Tyco filed a petition in the United States Patent and Trademark Office (“PTO”) requesting reexamination of the '544 patent based on Netherlands Patent Publication No. 9000909. The examiner in charge of the reexamination issued an office action in which she found that the “spring means” limitation in claims 1 and 24 of the '544 patent was a “means-plus-function” limitation and required that the spring means be a separate structural element from the hinged arm. See 35 U.S.C. § 112, ¶ 6. Tyco then filed a motion asking the district court to adopt the PTO’s construction of the disputed claims, but the court denied this motion on November 21, 2007.
At the second trial, the district court instructed the jury that the spring means limitation required that “once the hinged arm is unlatched for the first time, the ‘spring means’ must move the guard along the needle toward the needle tip.” The trial court also instructed the jury that “[t]he spring is not required to move the guard all the way to the tip of the needle but must, by itself, move the guard for some distance.”
On November 30, 2007, a jury returned a verdict of infringement as to both of Tyco’s accused products. Tyco thereafter filed motions seeking JMOL and a new trial. The district court denied these motions, however, explaining that although it was a “close issue,” Becton had “adduced enough circumstantial evidence from which the jury could reasonably conclude that the living hinges of Tyco’s products are
Tyco then appealed to this court, challenging the district court’s interpretation of the asserted claims and the denial of its motions for JMOL and a new trial. Becton filed a conditional cross-appeal, arguing that if the district court’s judgment is reversed, it should be granted a new trial on the issue of whether Tyco infringed the '544 patent by manufacturing — rather than selling — the Magellan needles and blood collectors. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1).
Discussion
Precedent requires that this court conduct a de novo review of claim construction. See Cybor Corp. v. FAS Techs., Inc.,
I.
To establish literal infringement, “every limitation set forth in a claim must be found in an accused product, exactly.” Southwall Techs., Inc. v. Cardinal IG Co.,
Claim 1, which has been treated as representative, calls for a “spring means connected to said hinged arm for urging said guard along said needle cannula toward” the tip of the needle. Following a Markman hearing, the district court correctly construed this limitation to require that: “The hinged arm is connected to a spring that moves the guard along the cannula toward” the tip of the needle. By its plain terms, this construction contem
Claim construction “begins and ends in all cases with the actual words of the claim.” Renishaw PLC v. Marposs Society per Azioni,
1. A shieldable needle assembly comprising:
a needle cannula having a proximal end and a distal tip;
a guard having a proximal end, an opposed distal end and a side wall extending therebetween, said guard being slid-ably movable along said needle cannula from a first position substantially adjacent said proximal end of said needle cannula to a second position where said distal tip of said needle cannula is intermediate said opposed proximal and distal ends of said guard; a hinged arm having proximal and distal segments articulated to one another for movement between a first position where said segments are substantially collapsed onto one another and a second position where said segments are extended from one another, said proximal segment of said hinged arm being articulated to a portion of said needle assembly adjacent said proximal end of said needle cannula, said distal segment of said hinged arm being articulated to said guard, said proximal and distal segments of said hinged arm having respective lengths for permitting said guard to move from said first position to said second position on said needle cannula, and for preventing said guard from moving distally beyond said second position; and
spring means connected to said hinged arm for urging said guard along said needle cannula toward said second position.
'544 patent col.7 ll.7-35 (emphases added).
Claim 1 lists four separate elements: 1) a needle, 2) a guard that rides on the needle, 3) a hinged arm attached to the guard, and 4) a spring means “connected to” the hinged arm. Where a claim lists elements separately, “the clear implication of the claim language” is that those elements are “distinct eomponent[s]” of the patented invention. Gaus v. Conair Corp.,
The specification, moreover, confirms that the spring means is a separate element from the hinged arm, as the only elements disclosed in the specification as “spring means” for urging the guard forward are separate structures from the hinged arm and its hinges. There is no suggestion that the hinged arm or its hing
Indeed, Becton’s assertion that the spring means and the hinged arm can be the same structure renders the asserted claims nonsensical. Independent claim 1 of the '544 patent describes the spring means as being “connected to” the hinged arm and independent claim 24 describes it as “extending between” the hinged arm and a mounting means.
Furthermore, if the hinged arm and spring means are not separate structures, then the asserted claims are clearly invalid as obvious over the prior art. See Whittaker Corp. v. UNR Indus., Inc.,
There can be no literal infringement where a claim requires two separate structures and one such structure is missing from an accused device. See Gaus,
In rejecting Tyco’s argument that the asserted claims require an added spring member, the district court noted that “the abstract of the '544 patent states that a spring may be provided to assist movement of the guard toward the distal shielded position. It does not state that a spring must be provided.” Summary Judgment Decision,
II.
Furthermore, even under the trial court’s erroneous claim construction, Becton adduced no credible evidence establishing literal infringement by Tyco’s accused products. The thrust of Becton’s infringement argument was that the hinges in Tyco’s needles contain stored energy and that when the hinged arm is unlatched, the hinges act as “springs” that cause the guard to move down the needle cannula. The fatal defect in this theory is that Becton failed to produce any evidence that this posited movement ever occurred. Becton did not provide any test data or even a single live demonstration showing that: 1) the hinges in the accused devices contained stored energy, or 2) they moved the guard even one millimeter down the needle cannula.
Living hinges are thinned pieces of plastic that have a long “flex-life,” meaning that they can bend or flex repeatedly without breaking. Depending on how they are manufactured, such hinges can contain differing amounts of stored energy. The hinges in certain prior art safety needles contained stored energy. Becton, however, failed to produce evidence demonstrating that the hinges in Tyco’s accused devices contained any such stored energy. Tyco’s expert, Mary Boyce, testified without contradiction that any stored energy imparted to the hinges during the manufacturing process quickly dissipates.
An important feature of living hinges is that they have “memory,” i.e., they “remember” past positions and seek to return to them after being bent. Although the hinged arm in Tyco’s safety needle is initially molded in a flat configuration, it is bent into a folded position during the manufacturing process. During the final step of the manufacturing process, the fully-assembled needle, with the hinged arm folded and latched, is placed in a sealed package and sterilized with gamma radiation. This irradiation changes the molecular structure of the hinges so that the folded position of the hinged arm has become the neutral or “relaxed” position to which the hinged arm, if moved, will tend to return.
At trial, Tyco demonstrated repeatedly that once the hinged arms in the accused devices were unlatched,
Thus, as the district court correctly acknowledged, Beeton’s “direct evidence regarding the movement of the guard [was] insufficient to support the jury’s finding of infringement.” JMOL Decision,
It is undisputed that the accused devices contain a latch. It is also beyond cavil that a living hinge can contain stored energy and that if that hinge is held back by a latch and then released, it could act as a spring. Not every hinge contains stored energy, however, and not every device with a latch acts as a spring. A door, for example, can have both hinges and a latch, but does not necessarily spring open when unlatched. Although Becton had ample opportunity to do so, it failed to demonstrate either that the hinges in Tyco’s safety needles contained any stored energy or that they pushed the guard forward after the latch was released. Instead, as Tyco explained at trial, the latches on the accused safety needles were designed not to restrain stored energy, but to prevent the shield from being accidently activated or dislodged prior to use.
The Magellan products were initially developed by Specialized Health Products, Inc. (“SHPI”), a small Utah company that designs safety needles for several larger medical companies, including both Tyco and Becton. Mark Ferguson, an SHPI mechanical engineer, testified that the Magellan safety needles and blood collection devices were specifically designed not to include a “spring assist” feature. Instead, they were intended to allow for “full manual control of the activation of the [safety] guard.” The reason for this was that many “clinicians ... didn’t care for the abrupt activation of spring-assisted devices.” Furthermore, a spring-assisted blood collection device can activate so rapidly that blood remaining on a needle after use can splatter, increasing the risk of disease transmission. Ferguson stated unequivocally that “[t]he living hinges in the
Contrary to Becton’s assertions, the testimony of Garris, Becton’s expert, is insufficient to support the jury’s verdict. See id. at *4 n. 2,
Becton claims that video clips of Tyco’s expert, Boyce, removing the latch from an accused needle demonstrates that a spring moves the needle guard down the needle cannula. As the district court correctly concluded, however, “Dr. Boyce’s videos ... are not sufficient to support the jury’s verdict.” Id. Boyce did a series of tests in which she attempted to cut the latch off of an accused needle while the hinged arm was still latched. In these tests, however, the guard never moves to the position it would be in after an actual device is unlatched. Nothing in the Boyce videos, therefore, demonstrates that the hinges in the accused devices, as manufactured and sold, move the guard toward the tip of the needle after the hinged arm is unlatched.
Becton also asserts that a force-displacement test conducted by Boyce “shows that the living hinges exert a force immediately after unlatching that helped the artificial finger move the guard forward.” As a preliminary matter, it should be noted that even if it had been established that the hinges “helped” the artificial finger move the .guard, this would not be sufficient to meet the trial court’s claim construction, which required that the hinged arm move the guard “by itself’ at least some distance toward the tip of the needle.
Becton makes much of the fact that “the accused devices themselves were in evidence, and the jury was able to examine them.” The jury, however, was not free to disregard the overwhelming record evidence showing that no movement of the guard occurred after the hinged arm was unlatched and instead to “infer” that the hinges might contain some stored energy that might be capable of moving the guard down the needle cannula. It is inconceivable that the jury, by examining the accused devices, could see the hinges move the guard when Becton, despite repeated opportunities to do so, was unable to demonstrate that such movement ever occurred. A jury verdict based on inferences wholly unsupported by the record cannot stand. See Lightning Lube,
III.
In its quixotic quest to establish infringement of the '544 patent, Becton argues that Tyco’s accused needles do, in fact, have springs that are separate structures from the hinged arm. In support, it contends that the hinges in the hinged arm are separate structures from the hinged arm itself. This argument is unavailing. A “hinged arm,” by definition, must include at least one hinge. Becton, in fact, concedes in its brief on appeal that the middle hinge, which connects the proximal and distal segments of the hinged arm “is part of the hinged arm.” It argues, however, that the two other hinges of the hinged arm — one which connects the arm to the needle hub and one which connects the arm to the guard — are separate structures from the hinged arm and can therefore satisfy the spring means limitation of the asserted claims.
We likewise reject Becton’s argument that the district court erred in granting Tyco’s motion for an order in limine precluding Becton from presenting evidence that Tyco’s accused products infringed the '544 patent during the manufacturing process. After Boyce, Tyco’s expert, submitted her expert report concluding that any energy imparted to the hinges in Tyco’s accused products quickly dissipates, Becton attempted to rely on the fact that the hinges might contain some stored energy during the manufacturing process. Because Becton’s argument — that a version of Tyco’s products that existed temporarily during the manufacturing process might infringe the '544 patent — -was not properly raised during discovery, the district court did not abuse its discretion in precluding Becton from presenting evidence regarding this theory at trial.
Conclusion
Accordingly, the judgment of the United States District Court for the District of Delaware is reversed.
REVERSED.
Notes
. The district court concluded that Becton had waived the right to assert infringement under the doctrine of equivalents.
. Following the second trial, the PTO issued a final office action affirming the examiner’s conclusion that the spring means limitation was a means-plus-function limitation.
. Tyco also contends that a separate spring is required because the spring means limitation is in means-plus-function format, see 35 U.S.C. § 112, ¶ 6, and the only structures disclosed in the specification for performing the recited function of moving the guard toward the tip of the needle are added spring members. We need not reach this argument, however, because we conclude that' — regardless of whether the asserted claims invoke section 112, paragraph 6 — an added spring element is required by the plain language of the claims.
. Claim 24 calls for a “spring means extending between said mounting means and said hinged arm for urging said guard toward said second position.’’
. On appeal, Becton contends that the district court did not find that Tyco's accused devices lacked a spring that was a distinct structural element from the hinged arm. This argument is belied by the record. In denying Tyco's motion for summary judgment, the district court stated:
Tyco ... sells the Monoject Magellan" safety products, including the Monoject safety needle products and the Monoject SBC products.... The Monoject safety needle products do not have a separate spring that moves the guard toward the second position. ... The Monoject SBC products do not have a separate spring that moves the guard toward the second position.
Summary Judgment Decision,
Although the district court later referenced two of the hinges of the hinged arm as possible springs in its March 2006 decision denying Tyco’s JMOL motion following the first trial, the district court never altered its original finding that the accused products do not contain an added spring element. Furthermore, as will be discussed more fully in section III, there is nothing in the '544 patent to suggest that the hinges are not part of the hinged arm or that they function as springs that move the safety guard down the needle cannula.
. Claim 17, which includes a clip feature not found in the asserted claims, recites:
A shieldable needle assembly comprising: a needle cannula having a proximal end and a sharply pointed distal tip, a guard having a proximal end, an opposed distal end and a side wall extending there-between, said guard being slidably movable along said needle cannula ... [and] said guard including a clip retained between said side wall and said needle cannula, said clip being configured to cover said tip when said guard is in said second position on said needle cannula; and
a hinged ann having proximal and distal segments articulated to one another for movement between a first position where said segments are substantially collapsed onto one another and a second position where said segments are extended from one another, said proximal segment of said hinged arm being articulated to a portion of said needle assembly adjacent said proximal end of said needle cannula, said distal segment of said hinged arm being articulated to said guard, said proximal and distal segments of said hinged arm having respective lengths for permitting said guard to move from said first position to said second position on said needle cannula, and for preventing said guard from moving distally beyond said second position.
'544 patent col.8 ll.34-64 (emphases added).
. The district court did not err in instructing the jury that the spring must move the guard "once the hinge is unlatched for the first time.” Prior to the first trial, Becton's sole
. The trial court correctly instructed the jury that the spring means was required to move the guard "by itself' for some distance down the needle cannula. The court gave this instruction because, as discussed previously, the only infringement theory disclosed by Becton prior to trial was that once the hinged arm was unlatched, the hinges moved the guard toward the needle tip. Significantly, Becton did not assert that the hinges in the hinged arm only moved the guard when the guard was also being pushed down the cannula by a health care worker. During the second trial, however, Becton attempted to assert yet another new infringement theory, which was that the hinged arm did not actually move the guard by itself, but only helped to move the guard when a health care worker was already pushing the guard down the needle cannula. Recognizing that this "combination of forces" theory was a "new argument” on Becton's part, the district court properly instructed the jury that to establish infringement Becton was required to show that the spring “by itself” moved the guard at least some distance toward the tip of the needle.
A further problem with Becton's newly-minted "combination of forces” theory is that Becton never provided any objective evidence demonstrating that the hinges of the hinged arm assisted the user's finger in moving the safety guard down the needle cannula. Although Becton argued that the user's finger and the hinges worked in tandem to move the safety guard, it never established that the hinges actually contributed to this movement. Becton provided no test data that reliably distinguished between movement caused by
. We do not agree with Becton's assertion that some of the hinges of the hinged arm can be considered separate structures from the hinged arm itself. The hinged arm limitation requires the hinged arm to have two segments which are "articulated to” each other; it also requires that these segments be "articulated to” the guard and "articulated to” the needle assembly. The hinged arm limitation thus includes not only the two plastic segments of the arm, but also the hinges that articulate the segments to each other, to the needle guard and to the needle hub. See, e.g., McGrawHill Dictionary of Sci. & and Tech. Terms 142 (6th ed. 2003) (defining an "articulated structure” as "a structure in which relative motion is allowed to occur between parts, usually by means of a hinged or sliding joint or joints”).
Becton, moreover, fails to explain why the middle hinge is part of the hinged arm but the other two hinges are not. There is nothing in the language of the asserted claims or the specification of the '544 patent to suggest that all three hinges are not part of the hinged arm structure.
. In its complaint, Becton asserted that Tyco "has made ... and continuéis] to make, use, sell and/or offer for sale ... products which infringe one or more claims of the '544 patent.” The argument that a product infringes as it is manufactured and sold, however, is very different from the argument that an interim version of Tyco's product, which existed only temporarily during the manufacturing process could infringe the asserted claims, even if that product did not infringe when the manufacturing process was complete or when the item was sold.
Dissenting Opinion
dissenting.
The majority avoids the critical issue upon which this decision turns; i.e., whether 35 U.S.C. § 112, ¶ 6 governs the claim construction of the “spring means” limitation. In a brief footnote, the majority sweeps and brushes aside the means-plus-function analysis as unnecessary in light of the “plain language of the claims.” Maj. Op. 1253 n. 3. Without having analyzed the scope of the claims, the majority somehow concludes that the claim language covers only devices having separate “spring means” and “hinged arm” structures. Then applying this simplistic claim construction to analyze the sufficiency of the evidence, the majority improperly overturns the jury’s verdict finding infringement. For these reasons, I respectfully dissent.
Although the majority ignores the issue completely, the parties have vigorously contested the claim construction of the “spring means” limitation and have made this issue the focal point of their legal position before the district court and this court. The limitation reads: “a spring means connected to said hinged arm for urging said guard along said needle cannula toward said second position.” '544 pat
Tyco ... contends that a separate spring is required because the spring means limitation is in means-plus-function format, see 35 U.S.C. § 112, ¶ 6 ... We need not reach this argument, however, because we conclude that — regardless of whether the asserted claims invoke section 112, paragraph 6 — an added spring element is required by the plain language of the claims.
Maj. Op. 1253 n. 3. First, it is unclear what the majority means by “an added spring element.” An “added spring element” does not appear in the “plain language of the claims,” specification, or prosecution history of the patent. Second, claim construction is necessary to determine the scope of the claims. Markman v. Westview Instruments, Inc.,
If a claim element “contains the word ‘means’ and recites a function,” there is a presumption that the claim is in means-plus-function form. Envirco Corp. v. Clestra Cleanroom, Inc.,
To determine whether the claim term should be construed as a means-plus-function limitation, we begin by evaluating how the term “spring” is used in the specification and the intrinsic record. Phillips,
In this case, the written description defines the term “spring means” as a type of device that imparts a function of urging the safety guard toward the needle tip. A “spring” as defined in the written description denotes a type of device with a generally understood meaning in the mechanical arts. See Greenberg v. Ethicon Endo-Surgery, Inc.,
Next, the court in a proper claim analysis should consider whether the claims elaborate sufficient structure to rebut the means-plus-function presumption. The '544 patent claims state that the function of the “spring means” is for “urging the guard along said needle cannula.” Id. at col.7 11.34-35. The claims go on to recite additional structure to achieve that function. Claim 1 recites “spring means connected to said hinged arm,” id. at col.7 11.34-35 (emphasis added), and claim 24 recites “spring means extending between said mounting means and said kinged arm,” id. at col.10 11.17-20 (emphasis added). Thus, the claim language demonstrates that the combination of the “spring means” and “hinged arm” perform the “urging” function. Accordingly, the claims include additional structural limitations to rebut the means-plus-function presumption.
Tyco obviously disagrees with this conclusion; however, its reliance on Unidynamics Corporation v. Automatic Products International,
In this case, however, the written description defines “spring means” as a spring structure. For example, each embodiment employs a spring structure; e.g., coil springs, plastic springs, hinged springs, and over-centered springs. Unlike Unidynamics, the spring is not just an example of a spring means to perform the function; it is the only type of structure disclosed in the written description. Moreover, the claim language itself provides additional structure following the “spring means” language. For example, claim 1 recites “spring means connected to said hinged arm,” '544 patent, col.7 11.34— 35 (emphasis added), and claim 24 recites “spring means extending between said mounting means and said hinged arm,,” id. at col.10 11.17-20 (emphases added). Unlike Unidynamics, the claim language itself includes additional structure; e.g., the hinged arm and mounting means — to perform the function of urging the guard along the needle cannula. Here, the means-plus-function presumption is rebutted and the claims should not be construed according to § 112, ¶ 6. Therefore, the district court correctly construed the “spring means” limitation according to its ordinary meaning: “[t]he hinged arm is connected to a spring that moves the guard along the cannula toward the second position.” Becton, Dickinson & Co. v. Tyco Healthcare Group, LP, No. 02-1694-GMS,
The majority first approves of the district court’s claim construction, see Maj. Op. 1253-54, but then proceeds to improperly import an extraneous limitation into the claims, which is contrary to our case law. See Comark Commc’ns, Inc. v. Harris Corp.,
The majority relies on CAE Screenplates, Inc. v. Heinrich Fiedler GmbH & Co.,
In the '544 patent, nothing in the claim language, written description or prosecution history requires that the “spring means” and “hinged arm” be separate structures. The plain language of the claims includes no such “separate structures” limitation. To the contrary, the written description contemplates that the “spring means” and “hinged arm” be included as part of the same “hinged arm assembly.” See, e.g., '544 patent, col.4 11.40-44 (stating that a spring may be encompassed “between” the joints of the hinged arm assembly); id. at col.5 11.66-68 (“proximal and distal segments ... of [the] hinged arm assembly ... can be articulated about [the] hinges.”). In other words, the “hinged arm assembly” is described as a structure with the “spring means” and “hinged arm” as components of that structure. There is no support in the written description requiring that the “spring means” and “hinged arm” be separate structures themselves. Accordingly, a proper claim construction does not require two separate structures for the “spring means” and “hinged arm.” The majority’s ruling improperly imports an extraneous limitation into the claims and fails to give the claim language its full, literal scope. By injecting this additional and extraneous limitation, the majority sidesteps the required analysis of whether the “spring
In addition to applying a wholly simplistic claim construction, the majority fails to consider substantial evidence on the record supporting the jury’s determination of infringement. The majority opinion states that:
The thrust of Becton’s infringement argument was that the hinges in Tyco’s needles contain stored energy and that when the hinged arm is unlatched, the hinges act as “springs” that cause the guard to move down the needle cannula. The fatal defect in this theory is that Becton failed to produce any evidence that this posited movement ever occurred. Becton did not provide any test data or even a single live demonstration showing that: 1) the hinges in the accused devices contained stored energy, or 2) they moved the guard even one millimeter down the needle cannula.
Maj. Op. 1257. However, the majority turns a blind eye to sufficient evidence supporting the jury’s determination of infringement. In reviewing a motion for judgment as a matter of law (“JMOL”) under Third Circuit law, we overturn a jury verdict “only if, viewing the evidence in the light most favorable to the nonmovant and giving it the advantage of every fair and reasonable inference, there is insufficient evidence from whiijh a jury reasonably could find liability.” Lightning Lube, Inc. v. Witco Corp.,
First, the accused devices themselves were entered in evidence, and the jury was able to examine them. The jury requested and received additional samples of the accused safety needles during its deliberations. Observation of the device is sufficient to determine whether the accused devices have a spring that, by itself, moves the guard towards the needle tip once the hinged arm is unlatched. The jurors directly examined the devices and concluded that they infringed. The jury’s factual findings based on direct examination of the accused devices are entitled to deference. See, e.g., Teleflex, Inc. v. Ficosa N. Am. Corp.,
Second, Becton’s expert, Mr. Garris, testified that the accused devices contain a spring that, by itself, moves the guard once unlatched. To show that the living hinges were responsible for motion, Becton’s expert demonstrated the activation of a Tyco Safety Needle and Blood Collector before the jury. Mr. Garris testified that a small movement occurs upon unlatching, which is caused by the living hinges. The jury is entitled to credit this testimony, particularly given that the jury viewed the device and could examine the action of the guard and the needle. We as an appellate court cannot and should not reweigh the reasonable evidentiary conclusions found by a jury and reverse its judgment.
Tyco argues that Mr. Garris’s opinion “was based entirely on a combination of forces working at the same time to move the guard, and not motion caused by the spring itself,” as required by the district court. But this is incorrect. There is testimony in the record that the court’s claim construction allows for a combination of forces “to get the process started;” e.g., to push the guard over the latch. Mr. Garris also testified that once the hinged arm is unlatched, the living hinge “springs
Third, the jury is allowed to infer from the evidence that the living hinge, by itself, moves the guard towards the needle tip based on the fact that Tyco included a latch on its product. Mr. Garris testified that the latch “restrains” the stored energy imparted to the living hinges at the time that they are folded. Mr. Garris testified that:
[I]t is very obvious that there is a spring. And in the folding process, it’s very clear that energy was put in. So without doing anything, it was very clear that there was a spring which was biased in a way that would make the guard go toward the tip of the cannula.
Mr. Garris also explained that the latch functions to “hold back the spring force and prevent!] the hinged arm from deploying” while a health care worker is giving an injection.
Fourth, Becton presented evidence that the hinged arm of the accused products is, in fact, biased against the latch at the time of their use and, hence, will extend to move the guard forward once unlatched. Moreover, Becton played a video clip that shows Tyco’s expert removing the latch of a Safety Needle while holding the guard in its initial position. The evidentiary video shows that once the latch is removed and the guard is released, the spring, by itself, moves the guard toward the needle tip a small but visible distance. The jurors could reasonably have concluded that this videotaped evidence is sufficient to show infringement.
In sum, there is substantial evidence— the jury’s self-examination of the accused needle guards, the expert testimony regarding the “spring” in the guard, the presence of the latch to restrain the guard’s movement, and the video tape evidence showing movement of the guard in the absence of the latch — to support the jury’s finding of infringement. Accordingly, applying the test of the Third Circuit as outlined in Lightning Lube, it is improper to disturb the jury’s finding of infringement. The district court was correct in denying the JMOL.
In conclusion, the majority opinion is severely flawed in several aspects. Most importantly, it fails to conduct a claim construction analysis to determine whether construction of the “spring means” limitation is governed by § 112, ¶ 6. Indeed, the majority puts the cart before the horse by concluding that the claim language covers only devices having two separate structures, but fails to undertake a proper claim construction analysis. The majority then applies its simplistic claim construction to its infringement analysis in reviewing the denial of JMOL. Contrary to Third Circuit law, the majority fails to view the evidence in the light most favorable to Becton and improperly overturns the jury’s verdict finding infringement. The majority climbs Jacob’s Ladder in search of perfection in the jury verdict, but, by substituting its own fact finding for that of the jury, it fails to allow the jury to perform its proper function. For these reasons, I dissent from the judgment of the majority opinion.