Perhaps the biggest Federal Circuit news last week didn’t come from the Federal Circuit; it happened when the Supreme Court granted review in Arthrex (read our insight). In the Federal Circuit, the Court not surprisingly issued a smattering of Rule 36s in the week following oral arguments and more precedential opinions than the week before. Below we provide our usual weekly statistics and our case of the week—our highly subjective selection based on whatever case piqued our interest.
Precedential opinions: 4
Non-precedential opinions: 2
Rule 36: 3
Shortest pending case from argument (non-Rule 36): St. Jude Medical, LLC v. Snyders Heart Valve LLC, Nos. 19-2108, -2109, -2140 (41 days)
Case of the week: St. Jude Medical, LLC v. Snyders Heart Valve LLC, Nos. 19‑2108, ‑2109, ‑2140 (Oct. 15, 2020)
Panel: Judges Newman, O’Malley, and Taranto, with Judge Taranto writing the opinion.
You should read this case if: you have a matter involving the meaning of a claim term defined functionally.
Perhaps because it’s almost Halloween, this week we’re focusing on a case that is very much for the faint of heart. The opinion addresses several issues, but we’re going to discuss just one—the construction of a claim term defined primarily by function under the broadest reasonable interpretation.
Snyder owns a patent claiming an artificial heart valve that is implantable without surgery and without removing the damaged valve. St. Jude challenged the validity of several of Snyder’s claims in inter partes reviews. The parties disputed, among other things, the meaning of a claim term requiring an artificial heart valve with a “frame sized and shaped for insertion between the upstream region and the downstream region” of the native heart valve. Applying the broadest reasonable interpretation standard, the Board refused to limit the claim to artificial valves “sized and shaped for insertion into a damaged heart valve.” It instead read the “sized and shaped” language to require merely a valve sized and shaped to fit “in a position between” the upstream and downstream valve regions, regardless of whether the damaged valve remained or had been removed. On this basis, the Board found Snyder’s claims anticipated by a prior-art reference describing an artificial valve that entirely replaced the damaged native valve.
The Federal Circuit held that the Board’s construction of the “sized and shaped” limitation was at odds with the specification’s clear disclosures. The Court began with the claim language, reasoning that “[t]he requirement that the frame be ‘sized and shaped’ a certain way suggests a focus on how the frame is fitted to the surrounding material (which depends on whether the native valve remains).” The Court also noted that the claim preamble refers to “repairing a damaged heart valve having a plurality of cusps.” That reference to “cusps” of the damaged valve “appears superfluous if claim 1 is interpreted to include embodiments where the damaged valve and its cusps are removed.”
Although the claim language was helpful, it was the specification that ultimately “resolve[d] the interpretive question” in the Court’s view. The specification stated that “the frame is sized and shaped for insertion between the plurality of cusps C of the damaged heart valve.” To the Court, that language went beyond describing only the valve’s placement between upstream and downstream regions (as the Board had held), it tied the “sized and framed” claim language to the artificial valve’s specific function of “fitting between the cusps of the intact native valve.” Other specification passages confirmed the importance of that sizing and fitting to the invention by consistently describing how the invention “can be inserted without removing the native heart valve and that this is an improvement on the prior art.” Indeed, for that very reason the specification had distinguished the prior art that the Board held anticipatory under its construction. As the specification explained, the purportedly anticipatory reference required “removal of the native valve,” but the invention was designed to overcome the need for removal. Based on these passages, the Court held that it was “unreasonable” to read the “sized and shaped” limitation as covering an artificial valve fitted only to occupy the space left after removing a damaged native valve. That changed construction was enough to reverse the Board’s anticipation holding.