Prosecution Statements Distinguishing Prior Art May Serve As Disclaimer Of Claim Scope

In Saffran v. Johnson & Johnson, No. 12-1043 (Fed. Cir. Apr. 4, 2013), the Federal Circuit reversed the ruling of the district court, holding that the district court misconstrued the claims of the patent-in-suit and that, under the correct construction, the defendants were entitled to JMOL of noninfringement.

Dr. Bruce N. Saffran is the owner and sole named inventor of U.S. Patent No. 5,653,760 ("the '760 patent"), which describes methods and devices for treating injured tissues by sequestering particles and macromolecules in a defined space using a selectively permeable barrier in an effort to promote healing. The specification of the '760 patent primarily describes the use of treated porous sheets for the treatment of complex bone fractures. The '760 patent also describes that the techniques may be used in conjunction with intravascular stents to promote quicker healing of blood vessels, resulting in less plaque buildup.

Saffran sued Johnson & Johnson and Cordis Corporation (collectively "Cordis") for infringing the '760 patent by manufacturing arterial stents out of a metallic open mesh structure with struts coated with a microscopic layer of polymer and the drug sirolimus. Following a Markman hearing, in which the district court construed a number of claim terms of the '760 patent, a jury returned a verdict in favor of Saffran, holding that the '760 patent was not invalid, that Cordis had willfully infringed the '760 patent, and that Saffran was entitled to damages. Cordis moved for JMOL on invalidity, infringement, willfulness, and damages, and the district court denied Cordis's motion for JMOL as to invalidity, infringement, and damages, but granted the motion as to willfulness. Cordis appealed, focusing on the district court's construction of the claim limitations "device" and "release means for release of an at least one treating material in a directional manner."

The Federal Circuit first addressed the "device" term and held that even though the term "device" appears in both the preamble and body of each of the independent claims, the district court misconstrued the term "device" as nonlimiting preamble language serving to give a descriptive name to the set of limitations in the body of the claim. Cordis argued that "device" should be construed to mean "a continuous sheet" to be consistent with the '760 patent specification and in view of allegedly disclaiming statements made by Saffran during prosecution. During prosecution of the...