District court holds "shaped to normally assume a straight configuration" does not also require another configuration

Takeaway: A district court construed "an anchor member ... shaped to normally assume a substantially straight configuration" as "sufficiently straight to be inserted into a needle". Smith & Nephew, Inc. v. Biomet, Inc., No. 05-611-KI (D. Ore. November 21, 2005). The court did not read "normally ... straight" as implying that the anchor must be capable of assuming another configuration (e.g., bent), which would exclude a rigid anchor.

Details: The claim construction was in the context of a motion for preliminary injunction.The asserted claims covered various surgical devices and their methods of use.

The accused infringer, Biomet, asked the court to limit the ancahor member in an apparatus claim to deformable anchors, so as to exclude rigid anchors. For support of this argument, the accused infringer relied on the drawings and the specification. With respect to the drawings, Biomet argued that deformable anchors were the only type of anchors shown. Biomet also explained that the term "normal" was used in the specification only when describing how a resilient, deformable anchor changes from a bent position to an extended ("normal") position.

The patentee, Smith & Nephew, asked the court for a construction of anchor member that allowed either rigid or deformable. Smith & Nephew pointed out that the specification expressly stated that the anchor member "may be formed of a substantially rigid material." Furthermore, a dependent claim recited "the anchor member is formed of resilient material." Smith & Nephew argued that, under the doctrine of claim differentiation, the independent claim should not be construed to also require that the anchor member be made of resilient material.

The court agreed with the patentee, and refused to read "deformable" or "resilient" into the claim. The court found the accused infringer's reliance on the specification to be unpersuasive: "Much of the specification cited by Biomet also supports Smith & Nephew's argument." The court seemed most persuaded by the patentee's claim differentiation argument. However, the patentee's argument focused on a dependent claim, where the court looked to an unasserted independent claim (claim 10) to interpret the claim at issue (claim 13).

[Unasserted] Claim 10 contains the disputed phrase "shaped to normally assume a substantially straight configuration," but also calls for an anchor member that is "formed of resilient material and deformable into the deformed position within the needle tip[.]" It is clear that claim 10 requires a resilient anchor member, while [at issue] claim 13 makes no mention of the material from which the anchor member must be formed. Claim 10 would not need to add the limitation for a resilient and deformable anchor if that limitation were equivalent to "shaped to normally assume a substantially straight configuration."

My two cents: It was the use of the term "normally" that first interested me in this decision, having recently blogged (here) about the interpretation of "normally" in a BPAI decision. To me, the presence of "normally" in the phrase "shaped to normally assume a substantially straight configuration" strongly implies that another configuration (not straight) must also be possible. To hold otherwise ignores the word "normally." For this reason, I think the claim clearly excludes rigid anchors. The court seemed to overlook this "plain meaning" argument.

I'll go farther and say that "normally" implies not just a flexible member, but a resilient member, i.e., the member springs back to its "normal" shape. A member that is merely capable of flexing between straight and non-straight has two configurations -- but I wouldn't say that one of them is the "normal" shape.

Here's another interesting aspect of the decision:IMHO, it's a case of claim differentiation gone wrong. It's true the doctrine of claim differentiation can be used to compare two independent claims, because the doctrine "creates a presumption that each claim in a patent has a different scope." Versa Corp. v. Ag-Bag Int'l Ltd., 392 F.3d 1325, 1330 (Fed.Cir.2004). But the Federal Circuit has more recently cautioned that the the doctrine should be applied sparingly when comparing two independent claims, noting that in such a situation "claim differentiation can not broaden claims beyond their correct scope." Curtiss-Wright Flow Control Corp v. Velan Inc., 438 F. 3d 1374, 1381 (Fed. Cir. 2006). I'd say the Oregon ddistrict court in Smith & Nephew, Inc. v. Biomet, Inc., used the doctrine to broaden beyond correct scope, as determined mainly by the plain meaning of "normally."

Curtis-Wright came out after the Oregon district court's decision in Smith & Nephew, Inc. v. Biomet, Inc., so the district court didn't have the benefit of the guidance from Curtis-Wright.