Patent Law

Holey Bone

By Gary Odom and Jordan Kuhn

Trimed sued Stryker for infringing its bone fracture fixer patent: 5,931,839. Claim construction fractured the assertion, resulting in a noninfringement summary judgment. Trimed had the misconstruction mended on appeal. The spat was over the structure of a hole.

Trimed v. Stryker (CAFC 2007-1327)

Claim 1, the independent claim of contention, concluded by citing holes that provided a means for letting a pin slide, along with other functionality.

Stryker moved for summary judgment of noninfringement, asserting that the phrase, ?said holes in said plate providing means for allowing the pin to slide axially therein but preventing compression across the fracture, and stabilizing said near end of the pin against displacement in the plane of the plate,? is a means-plus-function limitation governed by 35 U.S.C. § 112 ¶ 6. Stryker argued, based upon two separate grounds, that this means-plus-function limitation is not present in the accused devices.

The district court judge adopted Styker's claim construction and then let it off the hook.

The flaw was in not properly considering whether the claim limitation fell into the means-plus-function category governed by § 112 ¶ 6.  § 112 ¶ 6 does not apply if the claim language itself specifies the structure(s) required to perform the claimed functionality.

Use of the word ?means? in claim language creates a presumption that § 112 ¶ 6 applies. See Greenberg v. Ethicon Endo-Surgery, Inc., 91 F.3d 1580, 1583 (Fed. Cir. 1996). If, in addition to the word ?means? and the functional language, the claim recites sufficient structure for performing the described functions in their entirety, the presumption of § 112 ¶ 6 is overcome - the limitation is not a means-plus-function limitation. See Lighting World, Inc. v. Birchwood Lighting, Inc., 382 F.3d 1354, 1360 (Fed. Cir. 2004) (?[T]he fact that a particular mechanism . . . is defined in functional terms is not sufficient to convert a claim element containing that term into a ?means for performing a specified function? within the meaning of section 112(6).?); Sage Prods., Inc. v. Devon Indus., Inc., 126 F.3d 1420, 1427-28 (Fed. Cir. 1997). Sufficient structure exists when the claim language specifies the exact structure that performs the functions in question without need to resort to other portions of the specification or extrinsic evidence for an adequate understanding of the structure. See Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1376 (Fed. Cir. 2003); see also Envirco Corp. v. Clestra Cleanroom, Inc., 209 F.3d 1360, 1365 (Fed. Cir. 2000) (finding that ?baffle means? defeated the § 112 ¶ 6 presumption because ?the term ?baffle? itself imparts structure?).

The holes themselves were the claimed means structure. How much structure can a hole have?!

The district court erred in concluding that the language at issue in claim 1 was means-plus-function language that invoked § 112 ¶ 6. To be sure, the claim discloses functions for the holes?allowing a pin to slide axially through the pin plate while preventing compression across the bone fracture, and stabilizing the exposed end of the pin against displacement in the plane of the plate. As our precedent makes clear, the presence of the word ?means? and the articulation of a function is not the end of the inquiry. Just as clearly, the claim articulates the structure for performing the claimed functions?the holes. The functional language defines the size and shape of the claimed holes. The interior of the holes must be shaped to allow pins to slide through axially while the boundaries of the holes must be sized appropriately to hold the pins in place and limit their movement across the plane of the plate. The claim language makes clear that the structure for performing these functions is the holes themselves.

Since the claim language clearly identifies the structure for performing the functions in claim 1, it was unnecessary and inappropriate for the court to employ § 112 ¶ 6 and to hold that there must be a structure in addition to the holes (such as a slot) for performing these functions. Even if we were to construe this as a § 112 ¶ 6 claim, the specification discloses an embodiment that has precisely the same structure that is found in the accused devices.

Reversed and remanded.

Full post as published by The Patent Prospector on January 29, 2008 (boomark / email).