Vascular Solutions LLC v. Medtronic, Inc., Appeal No. 24-1398 (Fed. Cir. Sept. 16, 2024)

In our Case of the Week, the Federal Circuit evaluated certain heavily litigated claims directed to guide catheters. The patents all claimed a “substantially rigid portion/segment,” but the claims were drafted so different portions of the catheters satisfied the “substantially rigid portion/segment” claim term. The district court, finding the claims “mutually exclusive,” found the claim term indefinite, and thus all the asserted claims were indefinite as well. In a precedential decision, the Federal Circuit reversed.

At issue were seven patents that all derived from a common specification. Each claim disclosed a side opening. However, the asserted claims differ as to how they disclose the side opening. Some include it as part of the substantially rigid portion/segment; others recite the side opening as separate and distal to the substantially rigid portion/segment.

The district court found the claims to be mutually exclusive. Based on that finding, the court determined that the claims were indefinite, and queried “how a skilled artisan could possibly be expected to understand the scope of a patent when the same device could simultaneously infringe two mutually exclusive claims within that patent” (emphasis in the original).

The Federal Circuit reversed. First, it held that the district court had erred in determining that the claims were “mutually exclusive” and thus indefinite. As the Federal Circuit noted, “The district court’s conclusion, in effect, means that (1) claims in a patent cannot vary in the way they claim the disclosed subject matter, and (2) independent claims must be totally consistent with other independent claims.” The Court rejected these premises:

Claiming is not restricted in this way. The art of claiming sometimes involves drafting claims in a variety of ways to encompass the disclosed subject matter, so long as the claims themselves inform, “with reasonable certainty, those skilled in the art about the scope of the invention.” See Nautilus, 572 U.S. at 901. By finding the claims “mutually exclusive,” the district court forced itself into a later conclusion of indefiniteness, which it did not have to do.

The Federal Circuit directed the district court to engage in 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.”

The Court also confirmed that “the boundary of the ‘substantially rigid portion/segment’ does not have to be consistent across claims.” Rather, the limitation “is a functional limitation, meaning the substantially rigid portion is a portion of the catheter that is substantially rigid enough to achieve some function.” In some claims, it includes the side opening. In others, it does not. Regardless, the section must be rigid enough to perform the function of allowing the device to be advanced within the guide catheter.

The Court noted that normally, claim terms should be construed consistently. But if a functional construction is adopted, claim terms may be construed the same way across patents, regardless of whether (in this case) the side opening is within or outside of the substantially rigid portion.

The full opinion can be found here.

By Nika Aldrich

ALSO THIS WEEK

Astellas Pharma, Inc. v. Sandoz Inc., Appeal No. 23-2032 (Fed. Cir. Sept. 18, 2024)

In an appeal from a decision by a trial court that had found claims invalid pursuant to Section 101, the Federal Circuit reversed. The claims at issue were directed to pharmaceuticals. The defendants had never raised Section 101 as a defense. In the run-up to trial, lead defendant Sandoz agreed to limit its invalidity defenses to those arising under Section 112. After trial, the district court, sua sponte (that is, on its own), held the claims were directed to a natural law, and found them invalid under section 101.

The Federal Circuit held the district court had abused its discretion by disregarding the longstanding principle of party presentation—i.e., the courts must limit their decisions to arguments the parties present. Although the doctrine is flexible, the Court held “rendering a patent invalid on a basis not advanced by any party is” outside the scope of a district court’s reasonable discretion to flex the rule. The Court also rejected a request to reassign the case to a new judge on remand.

The full opinion can be found here.

By Nika Aldrich

This article summarizes aspects of the law and does not constitute legal advice. For legal advice for your situation, you should contact an attorney.