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Archived updates for Wednesday, January 30, 2008

"Holes Providing Means For Allowing . . ." Not Given Means Plus Function Interpretation

In TriMed v. Stryker (January 28, 2008), the Federal Circuit held that claim 1 of U.S. Patent No. 5,931,839, excerpted below, "recites sufficient structure on its face for performing the claimed functions, and therefore, contrary to the district court’s interpretation, does not involve a means-plus-function limitation:"

said holes in said plate providing means for allowing the pin to slide axially therein but preventing compression across the fracture, and stabilizing said near end of the pin against displacement in the plane of the plate.
According to the opinion by Circuit Judge Moore,

The district court erred in concluding that the language at issue in claim 1 was means-plus-function language that invoked § 112 ¶ 6. . . . The functional language defines the size and shape of the claimed holes. The interior of the holes must be shaped to allow pins to slide through axially while the boundaries of the holes must be sized appropriately to hold the pins in place and limit their movement across the plane of the plate. The claim language makes clear that the structure for performing these functions is the holes themselves.

Since the claim language clearly identifies the structure for performing the functions in claim 1, it was unnecessary and inappropriate for the court to employ § 112 ¶ 6 and to hold that there must be a structure in addition to the holes (such as a slot) for performing these functions. Even if we were to construe this as a § 112 ¶ 6 claim, the
specification discloses an embodiment that has precisely the same structure that is found in the accused devices. . . .

Stryker argues that the prosecution history of the ’839 patent dictates that the claim limitation at issue does not recite sufficient structure for performing the described functions and instead must be read as requiring "hole[s] plus another structure." Specifically, Stryker points to an interview summary that states, "Agreement was reached that the expression of [the configuration of the pin to be attached to the plate in a sliding manner that prevents compression across the fracture] in a means-plus-function format and better defining the holes of the plate would distinguish over the prior art of record." Because TriMed subsequently amended claim 1 to include the claim language in dispute, Stryker contends that the language must be construed as a means-plus-function limitation.

We disagree. While TriMed did use the word "means" in its amendment, its attorney remarks accompanying the amendment indicate that it intended for holes by themselves to constitute structure sufficient for allowing pins to slide axially through without compressing the fracture and stabilizing the pin from displacement across the plane of the plate. As the remarks put forth:

The invention provides for stabilization of the end of the pin projecting from the fractured bone fragment without compromising the securing of the fractured bone segment to the stable bone segment without compression at the fracture. This is achieved by utilization of the pin plate 1 which has holes at one end portion for being fixed to stable bone while the opposite end has holes for engaging the protruding end of the pin, so as to prevent displacement of the protruding end of the pin in the plane of the pin plate and wherein the hole provides means for allowing the pin to slide axially in the hole in the pin plate but preventing compression across the fracture.

No where in those remarks does TriMed suggest the importance of any structure in addition to holes, as Stryker would have us believe. See Cole v. Kimberly-Clark Corp., 102 F.3d 524, 531 (Fed. Cir. 1996) (explaining that the claim drafter’s "perfunctory
addition of the word ‘means’ did nothing to diminish the precise structural character" of the claim limitation). The prosecution statement does not even suggest that structure in addition to holes is required.

For the foregoing reasons, the claim language at issue recites sufficient structure on its face for performing the claimed functions, and therefore, contrary to the district court’s interpretation, does not involve a means-plus-function limitation.

. . . Because the claim language of the ’839 patent articulates sufficient structure for performing the functions of allowing pins to slide axially through the pin plate and stabilizing said pins from movement across the plane of the plate of the claimed invention, we determine that the district court improperly interpreted the pin holes claim limitation as governed by § 112 ¶ 6. In light of the proper claim construction, the grant of summary judgment of noninfringement must be reversed. We remand for further proceedings consistent with our opinion and in view of the entire record.

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