CAFC Rejects Claim Construction on Plain Meaning when Context Leads to a Different Interpretation

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Federal Circuit Review No. 74-2.
Court Rejects Claim Construction Based on Plain Meaning when Context Leads to a Different Interpretation

Atlas IP, LLC, v. Medtronic , Inc., Medtronic USA, Inc., Medtronic Minimed, Inc., No. 2015-1070, 2015-1105, 2015 U.S. App. LEXIS 18819 (Fed. Cir. Oct. 29, 2015) (Before Moore, Reyna, and Taranto, J.) (Opinion for the court, Taranto, J.). Click Here for a copy of the opinion.

Atlas IP, LLC (“Atlas”) sued Medtronic, Inc., Medtronic USA, Inc., and Medtronic MiniMed, Inc. (“Medtronic”), alleging that certain Medtronic medical products infringed its patent for controlling wireless network communications between a hub and remote units. In the related case, Atlas IP v. St. Jude (reported above), the court’s claim construction, also applied here, was that the hub defined the start time and duration of each communication cycle and it transmitted this information to the remotes “in advance” of each cycle. The district court granted Medtronic summary judgment of non-infringement and rejected Medtronic’s anticipation and obviousness challenges to claim 21. The parties appealed.

Consistent with the companion case, the Court held that each remote must know when its receiver and transmitter can be turned on and off, which meant that the scheduling information must be communicated before transmission began. Therefore, the hub must indicate the start and end schedule to the remotes before the transmission-opportunity slots for the remotes arrive; albeit not in advance of each cycle. Atlas argued, based on claim differentiation, that a medium access control protocol defined the intervals instead of the hub. The Court rejected this, noting that claim differentiation could not override the strong evidence provided in the specification of the hub both defining and transmitting the information. The Court affirmed summary judgment for Medtronic on non-infringement.

The Court reversed summary judgment of no anticipation and obviousness, rejecting the district court’s construction of language stating that each cycle “has intervals during which the hub and the remotes transmit and receive frames.” The district court’s interpretation was that the hub and remotes transmit and receive frames during each communication cycle. However, the district court erred by relying entirely on the plain meaning of the claim where context-based interpretations were necessary. The Court held that the plural terms “intervals” and “remotes” in isolation could mean what must occur during each interval and what was applicable to all the remotes, but there was no requirement indicated in the remaining claim language or specification that at least one remote transmit and receive frames during at least one interval. The Court held that this evidence, together with other language in claim 21, and teachings in the specification, showed that each cycle in the claims must have intervals in which remotes were allowed to transmit.

Accordingly, the Court affirmed on non-infringement, reversed on no anticipation and obviousness, and remanded in light of the proper claim construction.

The Author

Joseph Robinson

Joseph Robinson has over 20 years of experience in all aspects of intellectual property law. He focuses his practice in the pharmaceutical, life sciences, biotechnology, and medical device fields. His practice encompasses litigation, including Hatch-Waxman litigation; licensing; counseling; due diligence; and patent and trademark prosecution. He has served as litigation counsel in a variety of patent and trademark disputes in many different jurisdictions, and has also served as appellate counsel before the Court of Appeals for the Federal Circuit. Joe also focuses on complex inter partes matters before the U.S Patent and Trademark Office, inventorship disputes, reexaminations and reissues. His experience includes numerous interferences, a particular advantage in new U.S. Patent and Trademark Office post-grant proceedings. He also counsels on patent–related U.S. Food and Drug Administration issues, including citizen petitions, Orange Book listing, and trademark issues. For more information and to contact Joe please visit his profile page at the Troutman Sanders website.

Joseph Robinson

Robert Schaffer is an intellectual property partner at Troutman Sanders. Bob applies more than 30 years of experience to IP counseling and litigation. His work includes patent procurement, strategic planning and transactional advice, due diligence investigations, district court patent cases, and Federal Circuit appeals. He regularly handles complex and high-profile domestic and international patent portfolios, intellectual property agreements and licensing, IP evaluations for collaborations, mergers, and acquisitions. In disputed court cases Bob’s work includes representing and counseling client in ANDA litigations, complex patent infringement cases and appeals, and multidistrict and international cases. In disputed Patent Office matters his work includes representing and counseling clients in interferences, reexaminations, reissues, post-grant proceedings, and in European Oppositions. For more information and to contact Bob please visit his profile page at the Troutman Sanders website.

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