Reliance on specification to interpret disputed claim term is appropriate

In ICU Medical, Inc. v. Alaris Medical Systems, Inc., Fed. Cir., No. 2008-1077, March 13, 2009, the Federal Circuit affirmed a decision of the U.S. District Court for the Central District of California holding that (i) claims 11, 12, and 16 of U.S. Patent No. 6,572,592 (the '592 patent), claims 1, 3, 4, 6, and 7 of U.S. Patent No. 5,685,866 (the '866 patent), and claims 1 and 2 of U.S. Patent No. 5,873862 (the '862 patent) were not infringed and (ii) claims 17-26, 31-42, and 46 of the '592 patent and claims 11-16 of U.S. Patent No. 6,682,509 (the '509 patent) were invalid for failure to satisfy the written description requirement.

ICU Medical, Inc. (ICU) sued Alaris Medical Systems, Inc. (Alaris) for infringement of four patents relating to valves used in medical intravenous setups. The asserted claims were grouped into spike claims, spikeless claims, and tube claims. Regarding the spike claims, there was a dispute on the meaning of the term "spike." Regarding the spikeless and tube claims, there was a dispute on support for these claims in the written description. The district court granted summary judgment of non-infringement of the asserted spike claims and summary judgment of invalidity of the asserted spikeless and tube claims. These judgments were appealed by ICU.

The following relates to the summary judgment of non-infringement of the asserted spike claims.

The Federal Circuit held that in construing a claim term in dispute, it is appropriate to rely heavily on the specification to understand how a person of ordinary skill in the art would understand the claim term. The claim term in dispute is “spike.” The Federal Circuit agreed with the district court’s interpretation of “spike” as meaning “an elongated structure having a pointed tip for piercing the seal, which may be sharp or slightly rounded.” The Federal Circuit agreed with the district court that there is support for this interpretation in the specification.

ICU wished for a broader interpretation of "spike" as "upward projection."

ICU argued that the specification discloses a spike having a hole at the tip and such a spike would not be pointed. Giving a needle having a hole as an example, the district court argued, and the Federal Circuit agreed, that a spike can have a hole at the tip and still be pointed.

ICU objected to addition of the functional limitation "for piercing the seal" in the interpretation of "spike" on the basis that this is importation of limitation from the specification into the claims. The Federal Circuit explained that it is appropriate to consider the functions of the claim term in seeking to understand the claim term. The Federal Circuit added that since the degree to which the spike is to be pointed was not stated, the degree to which the spike needs to be pointed has to be defined in terms of the function of the spike.

ICU also tried to argue for a broader interpretation of "spike" based on the theory of claim differentiation, but this argument failed because the claim requiring spike to have "a pointed tip for piercing the seal" was not a part of the original disclosure and was added after introduction of the allegedly infringing Alaris products.