United States Court of Appeals for the Federal CircuitUnited States Court of Appeals for the Federal Circuit
LIEBEL-FLARSHEIM COMPANY and MALLINCKRODT,
INC. v. MEDRAD, INC.,
March 22, 2007
Claim 10 of the 5,456,669 patent is
representative of the asserted claims of the front-loading patents and reads as
follows:
A method of
loading a tubular replacement syringe into a high pressure power injector for
injecting fluid into an animal, the method comprising the steps of:
providing
a power injector having:
a syringe
receiving opening with a generally circular periphery therein adapted to
receive a rearward end of a syringe having a generally circular rim,
a ram and a motor
linked to the ram and operable to reciprocate the ram along a segment of a line
projecting through the opening; and providing a hollow tubular syringe that
includes:
a cylindrical
body having an axis, a generally circular rim, a rearward end and a closed
forward end with a fluid discharge orifice therein, and
a plunger axially
slidable in the body, the syringe body being structurally capable of
withstanding, at least from the rim to the orifice, fluid at an operating
pressure of at least 100 psi within the interior thereof;
then:
inserting into
the opening, by generally rearward axial movement of the syringe, the rearward
end of the body;
rotating the
syringe in the opening a fraction of a turn to thereby lock the body around the
rim to the injector around the periphery of the opening; and
engaging the
plunger with the ram;
then:
energizing the
motor and thereby driving the ram forward along the line and parallel to the
axis to move the plunger axially forward at a programmed speed to inject the
fluid at the operating pressure from within the syringe and through the orifice
at a programmed rate into the animal.
以上是相當合乎Bilski之後的判斷標準的方法項寫法… tied to a particular
machine。
Medrad asserted, and the district court
agreed, that during the prosecution of the front-loading patents, the
applicants became aware of Medrad’s jacketless injector system and then deleted
all references to a pressure jacket in the asserted claims in order to
encompass Medrad’s injector within the scope of the claims.
5,456,669的專利權人因為貪心，把原來有的一項限制(pressure jacket)拿掉，擴大專利保護範圍，使得Medrad沒有jacket的注射器侵權。
Even though the claims do not expressly
recite a pressure jacket, the district court initially construed the asserted
claims of the front-loading patents as requiring a pressure jacket. Based on
that construction, the district court granted summary judgment of
noninfringement in favor of Medrad because Medrad’s accused devices do not
contain a pressure jacket.
一審的時候，即使claim中沒有pressure
jacket，一審法官還是在claim construction時加上這個限制。這是一審法官常幹的事，幫claim另外加上一些沒出現在claim中的限制，或是利用實施例來限縮權利範圍。結果是被告沒有侵權。
In the first appeal to this court, we
reversed the district court’s claim construction and determined that the
asserted claims of the front-loading patents do not require a pressure jacket.
第一次上訴的時候，二審法官糾正這個錯誤,發回更審。
On remand and in light of our claim
construction, the district court concluded that Medrad’s devices did infringe
the asserted claims of the front-loading patents, but that those claims were
invalid for lack of compliance with the written description and enablement
requirements of the statute.
一審法官再審時判決被告侵權，如原告所願，但是claim無效，重擊原告一拳。
The district court reasoned that the claims
were invalid for lack of written description because the specification does not
describe a jacketless injector. The court noted that the written description of
the invention is directed to the improvement of “loading and unloading a
syringe given the constraints presented by the pressure jacket.”
原因是說明書中沒有描述jacketless injector的實施例。
The court observed that a pressure jacket
was necessary to “maintain the integrity of the syringe housing against
pressures the syringe encounters during operation of the injector.” The court
further noted that the inventors themselves testified as to the importance of
the pressure jacket around the syringe and that the experiments with and
testing of jacketless systems were unsuccessful. The court also relied on testimony of
Liebel’s engineers that a jacketless system was not a mere design option and
that one skilled in the art would not know how to make a jacketless system.
然而pressure jacket是不可或缺的元件。
The court further found that no prototypes
of a jacketless injector had been made or described at the time of filing, and
that the state of the art was such that a jacketless system with a disposable
syringe would have been a “true innovation.”
Jacketless injector會是一個全新的發明(所以必須揭露清楚)。
Thus, the court concluded that Medrad had
proffered clear and convincing evidence that the specification does not satisfy
the written description and enablement requirements.
再上訴時，二審法官認為，USC 112第一段的enablement不只是要讓習知技藝者可以根據實施例來完成該發明，還必須要使得claim所涵蓋的範圍都是可以讓人可以據以實施。
We have previously construed the claims of
the front-loading patents such that they are not limited to an injector with a
pressure jacket, and therefore the full scope of the claimed inventions
includes injectors with and without a pressure jacket. That full scope must be enabled, and the district court was correct
that it was not enabled.
換句話說，claim所保護到的範圍，只要是沒人做過的，都要揭露清楚。這個觀點和Automotive technologies v. BMW， 2007，關於偵測汽車側邊撞擊感應器一案的判決結果相符。
Similarly, in this case, the asserted
claims read on, and the full scope of the claimed invention includes, an
injector system with and without a pressure jacket. There must be “reasonable
enablement of the scope of the range” which, in this case, includes both
injector systems with and without a pressure jacket. Id.
Claim包含了with/without pressure jacket兩種實施方式，實施例就必須要兩種都揭露(主要也是因為法官認為pressure jacket對於此injector極為重要)。
The irony of this situation is that Liebel
successfully pressed to have its claims include a jacketless system, but,
having won that battle, it then had to show that such a claim was fully
enabled, a challenge it could not meet. The motto, “beware of what one asks
for,” might be applicable here.
原告偷雞不著蝕把米，還要再被二審法官虧一下。
Because the district court correctly
granted summary judgment that Liebel’s patents are invalid, we affirm the
conclusion that all the asserted claims are invalid,…
最後以無效作結。
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