Same Language in Different Claims May Have Different Meanings

日本語 简体中文 繁體中文 عربي

On September 16, 2024, the U.S. Court of Appeals for the Federal Circuit (CAFC) vacated and remanded an invalidity ruling by the U.S. District Court for the District of Minnesota which concluded that independent claims using the same language to define different boundaries of a “substantially rigid portion/segment” of a catheter were “mutually exclusive” and, therefore, indefinite. The CAFC instructed the trial court to conduct claim construction “on a claim-by-claim basis with the understanding that, at the claim construction stage, the claims are not necessarily ‘mutually exclusive’ since each independent claim is a different ordered combination of limitations.”[1]

---

In July 2019, Vascular Solutions LLC, Teleflex LLC, Arrow International LLC, and Teleflex Life Sciences LLC (“Teleflex”) filed an infringement suit against Medtronic, Inc. and Medtronic Vascular (“Medtronic”). In its first preliminary injunction request, Teleflex alleged that Medtronic’s guide-extension catheter telescope product infringed multiple claims across several of Teleflex’s patents that are directed to a coaxial guide catheter. The asserted claims of the Teleflex patents describe a catheter having a side opening. Importantly, the location of the side opening is described differently in different claims. Some claims recite the side opening as part of a “substantially rigid portion/segment” of the catheter, while other claims recite the side opening as separate and distal to the “substantially rigid portion/segment.”

In response, Medtronic filed multiple inter partes review (IPR) petitions and argued that Teleflex’s claims were invalid because the claims were anticipated by prior art. The district court denied Teleflex’s first preliminary injunction request and determined that Medtronic had raised significant questions of invalidity with respect to written description as well as anticipation. The trial court stayed the action pending the results of Medtronic’s IPRs. Ultimately, the Patent Trial and Appeal Board (PTAB) ruled in Teleflex’s favor in all material respects.

Subsequent to the PTAB’s decisions, Teleflex filed a second preliminary injunction request in the district court. Teleflex mapped the claims reciting a “substantially rigid portion” to a portion of Medtronic’s telescope that includes a rigid polymer. For its claims describing a separate side opening portion distal to the substantially rigid portion, Teleflex identified the substantially rigid portion as stopping at the side opening. In other words, Teleflex asserted that the claim phrase “substantially rigid portion” meant one thing in one or more asserted claims, but meant something else in another group of asserted claims of the same patent. In their reply, Medtronic requested that the court interpret the term “substantially rigid portion” in all of the claims as the portion of a device “act[ing] like a pushrod.”

During the second preliminary injunction proceedings, the asserted claim limitations were divided into two groups. Group One limitations required that the side opening of the catheter be in the substantially rigid portion, while Group Two limitations required that the side opening of the catheter not be in the substantially rigid portion. Teleflex’s second preliminary injunction request was also denied by the district court, the trial judge reasoning that one of ordinary skill could not be expected to understand the scope of a patent “when the same device could simultaneously infringe two mutually exclusive claims within that patent.”

The district court next proceeded to claim construction. At this stage, Teleflex asserted that “portion” or “segment” in the claims should be interpreted as a “longitudinal section.” Medtronic argued that the limitation at issue should be construed as a “portion/section of the device acting as a pushrod.” The court rejected both sides’ positions. Instead, the court appointed Andrei Iancu, former director of the USPTO, as an independent expert to suggest a claim construction. Mr. Iancu proposed that the substantially rigid portion of the catheter be construed as “the first proximal section of a multi-section guide extension catheter, that ends where there is a material drop in the overall rigidity of the guide extension catheter at or distally to the proximal end of the coaxial lumen where an interventional cardiology device is inserted.” While Teleflex urged the court to adopt Mr. Iancu’s construction, Medtronic argued that all claims should be invalidated because the proposed construction would render the Group Two claims illogical. Noting again that the claims were mutually exclusive, the district court agreed with Medtronic, rejected Mr. Iancu’s suggested claim construction, and found that all claims including the phrase “substantially rigid portion/segment” were invalid for indefiniteness.

On appeal, Teleflex argued that the district court erred in its conclusion of indefiniteness. Specifically, Teleflex asserted that the court’s finding that “the boundary of the ‘substantially rigid portion’ must be the same for all claims” was incorrect. According to Teleflex, the side opening is designated as its own segment in some claims, while in other claims the side opening is designated as falling within the substantially rigid portion. Teleflex argued that while the boundary of the substantially rigid portion varies in the claims, the claimed variation does not make the claims “mutually exclusive.” The CAFC agreed.

Explaining that the lower court erred in the determination that the claims were “mutually exclusive,” the CAFC reminded that a claim drafter’s task may involve drafting claims in various ways to cover the disclosed subject matter. Furthermore, the CAFC concluded that “the boundary of the ‘substantially rigid portion/segment’ does not have to be consistent across claims” because this is a functional limitation wherein “the substantially rigid portion is a portion of the catheter that is substantially rigid enough to achieve some function.” That function is performed in different ways according to differently constructed embodiments of the invention, and there is no requirement than any one claim must cover all embodiments disclosed in the specification and drawings of the patent.

As to whether such a functional understanding of the limitation allows the same device to infringe different claims that define the boundary differently remains to be determined; the CAFC concluded that resolution of Teleflex’s assertion of infringement position is premature at the claim construction stage.

While this CAFC decision is a reminder that multiple embodiments of an invention may be claimed in a single patent, it also presents an unusual set of circumstances – resulting in lengthy, expensive, and ultimately unnecessary litigation motion and appellate practice that is entirely avoidable through the exercise of careful patent drafting. Specifically, patent drafters are well advised to avoid using identical claim language to mean different things in different claims of the same patent. Teleflex may well have prevailed on at least its second preliminary injunction request had the drafter of its patents done so.

UPDATE (by Peter Schechter):

On October 24, 2024, Chief Judge Schiltz of the U.S. District Court for the District of Minnesota, whose claim construction and invalidity decision was reversed by the CAFC as explained above, took the highly unusual step of recusing himself from the case so that it will now be presided over by another federal district judge.

Chief Judge Schiltz explained that he cannot “reconcile the Federal Circuit’s varying instructions with each other or with the facts of this case.” He explained that “the term ‘substantially rigid portion’ must have the same meaning within a patent … — something the Federal Circuit itself held in this case and many times in the past, see, e.g., Omega Eng’g, Inc, v. Raytek Corp., 334 F.3d 1314, 1334 (Fed. Cir. 2003) (“we presume, unless otherwise compelled, that the same claim term in the same patent or related patents carries the same construed meaning”) …” As a result, the “Court is at a loss, for example, to understand how claims that require the side opening to be placed within the substantially rigid portion and claims the [sic – that] require the side opening to be placed outside the substantially rigid portion could be considered anything other than mutually exclusive, as it is impossible for the side opening to be simultaneously within and outside the substantially rigid portion. The Court is even more puzzled as to how it can accomplish this feat of logic while also, as the Federal Circuit instructs, defining “substantially rigid portion” in a functional rather than a structural manner and ensuring that it bears the same meaning across all claims.”

The Chief Judge concluded: “The Court does not take this step lightly. In almost 20 years on the bench, the undersigned has never once recused after being reversed by an appellate court. But in this case, the Court literally does not know how it would proceed to construe ‘substantially rigid portion’ in a manner consistent with the Federal Circuit’s opinion and does not believe that it can set aside its previous conclusions to make an impartial determination.”

Vascular Solutions, LLC et al v. Medtronic, Inc., Case No. 0-19-cv-01760, Order (D. Minn. Oct. 24, 2024).