Senmed, Inc. And Ethicon, Inc. v. Richard-Allan Medical Industries, Inc.

888 F.2d 815, 1989 WL 121293

• Court: Court of Appeals for the Federal Circuit
• Decided: January 4, 1990
• Docket: 89-1091
• Status: Published

Opinions

MARKEY, Chief Judge.

Appeal from a judgment entered by the United States District Court for the Western District of Michigan, No. K 84-444, on a jury verdict that Richard-Allan Medical Industries, Inc. (Richard-Allan) failed to establish invalidity of U.S. Patent No. 4,109,844 (’844) and that Senmed, Inc. and Ethieon, Inc. (collectively Senmed) proved Richard-Allan’s willful infringement of that patent. We vacate in respect of validity and reverse in respect of infringement.

BACKGROUND

The claimed and accused devices are surgical staplers (skin staplers) that apply staples to close incisions or wounds. Unlike paper or stationery staplers, to which they are kin, skin staplers locate the staple-deforming anvil above the material to be stapled and deform the staple into a “box” shape rather than a tightly clenched configuration. Skin staples extend through the edges of skin tissue but remain open and able to flex when the tissue swells. To facilitate removal, the top of the staple is spaced slightly above the skin.

At trial, inventor Becht testified that, attributing unreliability of existing staplers to unnecessary complexity, he set forth to design a simpler device and focused on an area he considered the most complex, i.e., “the interface between where the staples are fed and where the staples were formed.”

Becht's effort led to the ’844 patent. Claim 1 reads:

A surgical stapling instrument for forming and implanting a staple in skin or fascia of a patient, said instrument comprising a handle portion incorporating a nose portion, said nose portion having an anvil plate at the bottom end thereof, said anvil plate terminating at its forward end in a coextensive anvil surface, said anvil plate being adapted-tee slidably mount a row of staples, means, to constantly urge and advance said row of staples along said anvil plate to place a forwardmost staple on said anvil surface, a staple driver mounted in said nose portion and shiftable vertically between a normal upper position closely adjacent said forwardmost staple on said anvil surface and a lower position wherein it forms and implants said forwardmost staple about said anvil surface, and Nmeawto shift said staple driver between SsalcFupper and lower position thereof.¹

The Proceedings

On October 14, 1984, Senmed sued Richard-Allan, alleging, inter alia, infringement of the ’844 patent. Following an exhaustive six-week trial, the jury returned a verdict in the form of answers to questions on anticipation, obviousness, infringement, and willfulness:²

1. Do you unanimously find that the defendant Richard-Allan has proved by clear and convincing evidence that either of the asserted claims of the Becht 844 Patent is invalid because such claim was anticipated by a single prior art reference which disclosed each and every element of a claim arranged as in such claim?

[jury answer] Claim 1, no. Claim 2, no.

2. Do you unanimously find that the defendant Richard-Allan has proved by clear and convincing evidence that any of the asserted claims of the Becht 844 Patent is invalid because the differences between such claims and the pertinent prior art were such that the subject matter of the claim as a whole would have been obvious to a person having ordinary skill in the pertinent art at the time of the invention?

[jury answer] Claim 1, no. Claim 2, no.

3. Do you unanimously find that the defendant Richard-Allan has infringed upon any of the asserted claims of the Becht 844 Patent?

[jury answer] Claim 1, yes. Claim 2, yes.

4. If you find the Becht 844 Patent infringed, do you unanimously find by clear and convincing evidence that Richard-Allan willfully infringed upon the Becht 844 Patent?

[jury answer] Yes.³

Richard-Allan moved for judgment NOV and for a new trial. Supplying a comprehensive opinion, the trial judge denied the motions and entered judgment in accord with the jury answers that constituted the verdict.

In his well written opinion, the trial judge discussed the evidence and Richard-Allan’s arguments in relation to literal infringement, infringement under the doctrine of equivalents, anticipation, obviousness, willful infringement, jury instructions, and an evidentiary ruling. The court noted that the credibility of Richard-Allan’s sole witness on anticipatory art could “reasonably be questioned.” Thrice noting that Richard-Allan “provided no testimony from an expert with ordinary skill in the art of skin stapling,” the court adopted inventor Becht’s claim-interpreting testimony in upholding jury answer 3 on infringement.

Richard-Allan here contends that certain of the jury's answers are unsupportable and that the trial judge therefore erred in refusing to enter judgment NOV. Admirably, it does not burden this court with challenges on the denial of its motion for a new trial, the correctness of any jury instruction, jury answer 1 (anticipation), or jury answer 4 (willfulness), but limits its appeal to jury answer 2 (obviousness) and jury answer 3 (infringement).

ISSUE

Whether the judgment entered on the jury verdict of infringement can be sustained in law.

OPINION

Introduction

To succeed here, Richard-Allan must show that the jury's finding of infringement is not supported by substantial evidence(or^hatit jvas made in relation to a claimjnterpretation that cannot ir£’law> be sustained. See ZMI Corp. v. Cardiac Resuscitator Corp., 844 F.2d 1576, 1581-82, 6 USPQ2d 1557, 1561-61 (Fed.Cir.1988). After careful review of the record, we are convinced that Richard-Allan satisfied the latter criterion. We must, therefore, reverse the judgment entered on the jury verdict of infringement.⁴

Richard-Allan says the “jury and the district court misconstrued the scope of claim 1" and that the claim, “properly construed,” cannot be read on its device. It argues that the claim limitation “means to constantly urge and advance said row of staples along said anvil plate to place a forwardmost staple on said anvil surface” cannot be read on its device because its advancing means places a forwardmost staple above its anvil. Stated differently, Richard-Allan says “on” the anvil surface must be interpreted as meaning “in physical contact with” the anvil surface.⁵

There was, at the pretrial, trial, and post-trial stages, an intense focus on claim interpretation. That an appellant’s arguments had been ineptly pres.ente.d to a trial court does not in itself preclude a reversal by this court if the record unequivocally establishes that the appealed judgment resulted from clear and reversible legal error. We cannot and will not, as Richard-Allan would have us do, substitute our view of facts, or re-try the case, or ignore all the events that occurred before the appeal. Construction of claim scope (claim interpretation), however, is a question of law for decision by the trial judge on motion for JNOV and by this court on appeal. Johnston v. IVAC Corp., 885 F.2d 1574, 1579 (Fed.Cir.1989); Standard Oil Co. v. American Cyanamid Co., 774 F.2d 448, 452, 227 USPQ 293, 295-96 (Fed.Cir.1985); Loctite Corp. v. Ultraseal Ltd., 781 F.2d 861, 866, 228 USPQ 90, 93 (Fed.Cir.1985); Fromson v. Advance Offset Plate, Inc., 720 F.2d 1565, 1569, 219 USPQ 1137, 1140 (Fed.Cir.1983). That a jury has answered a legal question may not in itself require reversal. Of a certainty, however, that circumstance cannot serve to relieve the trial judge or this court of the judicial duty to insure that the law is correctly applied. That duty hangs heavy on an appellate court when, as here, it necessitates reversal after a six week trial and a denial of a motion for JNOV.⁶

Claim Interpretation

In answering an infringement inquiry one must first interpret the claim. Mannesmann Demag Corp. v. Engineered Metal Prods. Co., 793 F.2d 1279, 1282, 230 USPQ 45, 46 (Fed.Cir.1986). Once an interpretation has been made, that same interpretation must be employed in determining literal infringement and infringement under the doctrine of equivalents. See Loctite, 781 F.2d at 870-71, 228 USPQ at 96.⁷ The claim here is interpreted in light of the probative facts in the record, i.e., all of the claim’s language, the specification, and the prosecution history. See Fromson, 720 F.2d at 1569-71, 219 USPQ at 1140-42.

Here the jury returned a naked verdict stating the ultimate fact of infringement. That circumstance requires the district court, and this court on appeal, to presume not only the jury’s claim interpretation but also the findings necessary to support that interpretation. See Newell Cos. v. Kenney Mfg. Co., 864 F.2d 757, 767-68, 9 USPQ2d 1417, 1426 (Fed.Cir.1988). Whether the jury premised its infringement finding on a literal reading of the claim or on the doctrine of equivalents, the claim interpretation necessary to support a finding of infringement cannot in this case be supported by the record. The claim language, specification, and prosecution history belie the claim interpretation asserted by Becht, necessarily arrived at by the jury, and adopted by the district court.

In interpreting the claim language “on said anvil surface,” the district court relied on Becht’s testimony that the phrase means the staple is placed “between the upper surface of the anvil, the coextensive anvil surface, and the lower limit of whatever abutting means is above it” and on a dictionary definition of “on” (“a position of contact or juxtaposition”), adding that “[ijnsofar as Becht claims that on the anvil surface means juxtaposed to the anvil surface, Beeht’s testimony is consistent with the plain language of the claim.” Citing Becht’s testimony that manufacturing tolerances required a gap between the staple and the anvil, the district court concluded, “[t]hus there is substantial evidence for the jury’s implied finding [sic, conclusion] that claim 1 of the Becht ’844 patent does not require the forwardmost staple to be in physical contact with the anvil.”⁸

The court said (in discussing its eviden-tiary ruling) the jury had been instructed that “a patentee may not adopt a position inconsistent with a position reflected in the prosecution history.” In evaluating the jury’s answer 3 on infringement, however, the court said nothing about whether the jury had complied with that instruction in arriving at its implied claim interpretation (from what appears below, the jury could not possibly have complied with that instruction). Nor did the court discuss the applicable claim language, the specification, or the prosecution history in an effort to arrive at its own claim interpretation as a matter of law. Those three parts of the record are undisputed and undisputable. They are also, as a matter of law, compelling and conclusive of the proper claim interpretation.

The claim language includes the limitation “closely adjacent said forwardmost staple” to specify the upper position of the staple driver. If Becht’s litigation-induced testimony that “on” means “juxtaposed” be accepted, two terms clearly intended to have different meanings in the claim’s context, “closely adjacent” and “on”, would mean the same thing. This court condemned such semantic antics in Burlington Indus., Inc. v. Dayco Corp., 849 F.2d 1418, 1421-22, 7 USPQ2d 1158, 1160-61 (Fed.Cir.1988).

The specification thrice describes the relationship of the forwardmost staple with the anvil surface:

The forwardmost staple rests upon the anvil forming surface.

The forwardmost staple is located on the anvil forming surface of the anvil plate.

s}s sjs * * * *

When the surgical stapling instrument of the present invention is in its normal position, there will always be a staple located upon the anvil forming surface.⁹

(Emphasis added.)

The prosecution history establishes that the examiner rejected the claim, citing Fishbein’s United States Patent No. 3,873,-016 as a reference, because Fishbein moved the forwardmost staple to a position above the anvil surface, from whence a staple driver moved it onto the anvil surface. At that time, Becht’s claim called only for means for moving a row of staples “toward said anvil surface” a limitation reading directly on Fishbein. After an agreement between the examiner and Becht’s attorney to indicate that the anvil surface, anvil plate, and driver are so related that the “driver does not move [the] staple prior to forming-setting,” claim 1 was amended:

means to constantly urge and advance said row of staples along said anvil plate [toward] to place a forwardmost staple of said row on said anvil surface, a staple driver mounted in said nose portion and shiftable vertically between a normal upper position closely adjacent said for-wardmost staple on said anvil surface and a lower position....

(Bracketed material deleted; italicized material added.)

Becht’s attorney made these remarks in submitting the amendment:

The present invention is markedly different [from the cited Fishbein reference] in that ... the staple driver 6 need only form the staple about the anvil surface, the driver not having to shift the staple to the anvil surface.

In his remarks, Becht’s attorney recognized that the examiner did not believe that original claim 1 “adequately set forth this distinction” over the Fishbein reference and argued:

The [amended] claim now calls for means to constantly urge and advance the row of staples along the anvil plate to place a forwardmost staple of the row on the anvil surface. The claim further indicates that the normal upper position of the staple driver is one in which the staples driver is closely adjacent to the forwardmost staple on the anvil surface. This is to further clarify the fact that that [sic] staple driver of the present invention does not have to devote any of its travel to the shifting of a staple from a magazine to the anvil surface prior to formation of the staple.

Thus Becht’s attorney knew perfectly well the difference between “on” and “closely adjacent” when he amended the claim to avoid the reference and obtain allowance of the claim. That knowledge and action was of course binding on Becht. See FMC Corp. v. Manitowoc Co., Inc., 835 F.2d 1411, 1415 n. 8, 5 USPQ2d 1112, 1115 n. 8 (Fed.Cir.1987). Yet, as above indicated, Becht testified at trial that “on” means “between the upper surface of the anvil ... and the lower limit of whatever abutting means is above it,” and the district court said that definition would be understood by one skilled in art, that one dictionary definition of “on” is “juxtaposition,” and that insofar as Becht testified that “on” meant “juxtaposed,” his testimony was consistent with the claim language. That claim interpretation, however, is incontestably inconsistent with the position taken by Becht during prosecution of his patent application, with the repeated description of the invention in the specification, with the explicit amendment of the claim language from “toward” to “on,” and with Becht’s argument for patentability (no force is required to shift a staple from a magazine to the anvil). Hence the jury’s and the trial court’s claim interpretation cannot stand.¹⁰

Literal Infringement

The claim requires advancing means that places the forwardmost staple “on” the anvil surface, which must be interpreted as “in physical contact” with the anvil surface. The advancing means of the accused device places the forwardmost staple above, not on, the anvil surface. Thus the claim does not read on the accused device and there can be no literal infringement.

Infringement Under the Doctrine of Equivalents

It is well established that limitations in a claim cannot be given a range of equivalents so wide as to cause the claim to encompass anything in the prior art. Perkin-Elmer Corp. v. Computervision Corp., 732 F.2d 888, 900, 221 USPQ 669, 678 (Fed.Cir.), cert. denied, 469 U.S. 857, 105 S.Ct. 187, 83 L.Ed.2d 120, 225 USPQ 792 (1984). From the foregoing discussion, it is clear that a range of equivalents encompassing the above-the-anvil arrangement of Richard-Allan’s stapler would also encompass the above-the-anvil arrangement of the prior art Fishbein stapler. In light_of_the claim and its. prosecution history, it is irrelevant that Fishbein’s staple is further above than Richard-Allan’s. Expressed in terms of prosecution history estoppel, Becht surrendered anv. right to such a range of equivalents — tvhen-he-amended his claim to avoid the-Fishb.ein_reference and obtain his patent. He cannot now recapture that which he surrendered. See Loctite, 781 F.2d at 870, 228 USPQ at 96.

CONCLUSION

The judgment entered on the jury’s answers in respect of anticipation, obviousness, and willfulness is vacated. The judgment entered on the jury’s answer in respect of infringement is reversed.

COSTS

Senmed to bear costs.

VACATED IN PART — REVERSED IN PART.

1 . Dependent claim 2 was also in suit, but, apparently agreeing that it stands or falls with claim 1, the parties do not discuss it and neither, accordingly, do we.

2 . The questions and the jury’s answers were read into the record. The appendix before us does not contain the written verdict form which the trial judge said he would show the parties.

3 . Richard-Allan labels the jury’s answers a "general verdict." The trial judge and the parties elected not to ask the jury for a true general verdict (e.g., "We find for the plaintiff/defendant”), or for answers to detailed fact interrogatories under Rule 49(a), Fed.R.Civ.P., or for a combination of a general verdict and answers to fact interrogatories under Rule 49(b), Fed.R. Civ.P. See Railroad Dynamics, Inc. v. A. Stucki Co., 727 F.2d 1506, 1515-17, 220 USPQ 929, 938-39 (Fed.Cir.), cert. denied, 469 U.S. 871, 105 5.Ct. 220, 83 L.Ed.2d 150, 224 USPQ 520 (1984). We must take the appeal as presented. That the parties view the verdict as the “equal of a general verdict" does not in itself require reversal or remand for retrial. See id. at 1515-16, 220 USPQ at 938.

4 . In view of our decision on infringement, there is no longer a case or controversy on validity and the judgment entered on jury answers 1 and 2 will be vacated. See Vieau v. Japax, Inc., 823 F.2d 1510, 3 USPQ2d 1094 (Fed.Cir.1987). Our decision on infringement also carries with it jury answer 4.

5 . Richard-Allan further cites the limitations "an anvil plate” and “said anvil plate terminating at its forward end in a coextensive anvil surface” and argues that, because "an” and "coextensive” mean the anvil plate must be an integral, one-piece structure, the limitation cannot be read on its two-piece structure. The trial judge rejected that interpretation, in view of Becht’s claim-interpreting testimony. Because infringement is avoided when one element (or substitute falling within a permissible range of equivalents), is absent, we need not and therefore do not discuss the limitations drawn to the anvil plate.

6 . We are, of course, fully aware of the principles eloquently set forth in the dissent, including those calling for deference to jury findings supported by substantial evidence and to acceptance of a jury’s application of the law when such application is sustainable. As explicated, infra, acceptance of the jury's and the district court's application of the law of claim interpretation in this case would result in a patentee’s recapturing what was forfeited in obtaining the patent, a result contrary to a fundamental underpinning of patent law. Such acceptance would not be mere "deference"; it would be blinded abdication of our appellate duty to uphold the law.

7 .The same interpretation of a claim must be employed in determining all validity and infringement issues in a case. See W.L. Gore & Assoc. v. Garlock, Inc., 842 F.2d 1275, 1279, 6 USPQ2d 1277, 1280 (Fed.Cir.1988).

Richard-Allan repeatedly argues an absence of "substantial evidence.” One employs evidence to prove facts, not legal conclusions. The facts on which the claim interpretation must rest (e.g., claim language, specification, prosecution history) are here undisputed. Equally undisputed are the facts related to the Fishbein structure and operation. Hence a remand for application of the proper claim interpretation is unwarranted in this case.

8 . Becht’s testimony was a fatally weak reed on which to lean. "On" is clearly neither a technical term nor a word of art having special meaning to those skilled in the art such that expert testimony is required for its interpretation. See Howes v. Medical Components, Inc,, 814 F.2d 638, 643, 2 USPQ 1271, 1273 (Fed.Cir.1987). Lawyers may create a "dispute” about any word, but there is nothing ambiguous or linguistically obscure about "on" as used in the present claim. Where as here "on” was clearly given its ordinary meaning in the specification and prosecution history, Becht’s self-serving, post-hoc opinion testimony on the legal question of whether it should have a different meaning was of little if any significance. See Envirotech Corp. v. Al George, Inc., 730 F.2d 753, 759, 221 USPQ 473, 477 (Fed.Cir.1984) ("[w]ords in a claim ‘will be given their ordinary and accustomed meaning, unless it appears that the inventor used them differently.”’ (Citation omitted.)) Nothing of record indicates Becht used "on” differently until he got to court. Lastly, an inventor may not be heard to proffer an interpretation that would alter the undisputed public record (claim, specification, prosecution history) and treat the claim as a "nose of wax.” See White v. Dunbar, 119 U.S. 47, 51-52, 7 S.Ct. 72, 74-75, 30 L.Ed. 303 (1886); Townsend Eng'g. Co. v. HiTec Co., 829 F.2d 1086, 1089-90, 4 USPQ2d 1136, 1139 (Fed.Cir.1987).

9 . That "on” must be interpreted as meaning the first of the dictionary definitions quoted by the district court, i.e., "position of contact,” is clear from Becht’s use of "on” and "upon” synonymously in the above-quoted portions of the specification. The dictionary definition of "upon" is "on the surface: on it.” Webster’s New Collegiate Dictionary 1276 (1979). On the other hand, "juxtaposed” means to place "side by side,” id. at 623, and thus cannot describe the claimed invention wherein the staples are not placed "side by side” with the anvil surface.

10 . The district court's reliance on Becht’s testimony that one could not mass produce a stapler at reasonable cost without providing some gap between the staple and anvil was misplaced. Manufacturing tolerances are immaterial to the interpretation of claim language. See Mannesmann, 793 F.2d at 1283, 230 USPQ at 47; see also ACS Hosp. Sys., Inc. v. Montefiore Hosp., 732 F.2d 1572, 1578, 221 USPQ 929, 933 (Fed.Cir.1984); Amstar Corp. v. Envirotech Corp., 730 F.2d 1476, 1481, 221 USPQ 649, 653 (Fed.Cir.1984).