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Once You Narrow, You CanDecember 8, 2005

For the second time, Norian Corp. v. Stryker Corp. came before the Federal Circuit. On the first appeal, the Federal Circuit reversed the district court’s grant of summary judgment of non-infringement, which held was based on an unduly restrictive claim construction. On remand, the district court again entered summary judgment of non-infringement based on its construction of a different claim limitation. The Federal Circuit affirmed.The patent at issue is directed to kits for preparing calcium phosphate compositions which rapidly set and are used as bone cements in medical or dental procedures. The question posed was Stryker’s claim construction of ‘a solution consisting of water and a sodium phosphate’ included a solution prepared from one or more sodium phosphates, or whether the term was limited to a solution prepared from only a single sodium phosphate. The Federal Court concurred with the district court’s analysis of claim construction which looked to: 1) where asserted claims use the restrictive term ‘consisting of’ to define the contents of the claimed solution, in that context, the term ‘a’ is singular; 2) the specification which contained repeated references to solutions made from a single sodium phosphate; 3) differing language limitations using ‘at least one’ when referring to sources of calcium or phosphoric acid, but lack of this phraseology when referring to sodium phosphate; and 4) the prosecution history of the patent which showed that the patentee surrendered the claim scope by narrowing amendments and comments by the prosecuting attorney referring to ‘a sodium phosphate,’ as well as, directing the examiner to the specification’s tables for examples of single-solute solutions.The Federal Circuit concurred with the district court’s analysis, noting that the characterization of the prosecution history supported a narrowing of claim scope creates a presumption that the patentee surrendered, for the purposes of the doctrine of equivalents, all subject matter falling between the scope of the original claim and the scope of the claim as amended.For the complete decision, log on to

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