No Infringement For Dental Devices Containing Features Opposite To Those Described In Claim's Preamble

Case: Bicon, Inc. and Diro, Inc. v. The Straumann Co., et al., Case No. 05-1168 (Fed. Cir. 3/20/06)

The One Sentence Summary: Patentee and licensee of apparatus for preserving space around dental implant during healing unsuccessfully claimed infringement by defendant's two dental implant products, neither of which incorporated key limitations of the claim at issue.

What They Were Fighting About: The patent for the apparatus, an implant for a patient's jaw to hold dental crowns, included one claim which had language in the preamble that could be construed as a limitation. If that limitation was part of the claim, defendant's devices would not infringe. The parties therefore disputed whether that limitation should be treated as part of the claim.

Federal Circuit Holdings:

• The claim at issue included a preamble, which described an abutment on the root member of the device, and further described that abutment as having a "frusto-spherical basal surface portion and a conical surface portion." The Federal Circuit found this language to be part of the claim limitations. Since defendant's devices lacked that feature, and in fact had opposite features, they did not infringe, either literally or under the doctrine of equivalents.
  
• The Federal Circuit rejected plaintiffs' argument that the preamble merely described the apparatus' purpose, reasoning that it provided a detailed description of the abutment's characteristics, and other claim elements were defined in a way that depended on those physical characteristics. Thus, other elements described in the body of the claim depended on the physical characteristics of the abutment stated in the preamble.
  
• The Federal Circuit rejected the argument that a preamble should never be read as a limitation, citing cases that held otherwise, for example because the preamble recites essential structure that is important to the invention or necessary to give meaning to the claim. Here, the preamble's limitation was necessary to define the structure of the claimed device.
  
• The Federal Circuit further reasoned that a contrary finding would require treating several elements of the claim as superfluous, which would both render the patent ambiguous, and be contrary to standard rules of construction. Plaintiff's construction would also effectively read other limitations out of the claim altogether, which again was contrary to standard rules of construction, and also contrary to the descriptions provided in the specifications.
  
• In rejecting plaintiff's argument for infringement under the doctrine of equivalents, the court noted that it effectively would have required treating a concave element of defendant's device as equivalent to the convex abutment described in the preamble, which is directly opposite the limitation requiring that it be frusto-spherical in shape. Observing that "[a] claim that contains a detailed recitation of structure is properly accorded correspondingly limited recourse to the doctrine of equivalents," the Federal Circuit also found that the patent implicitly disclaimed subject matter that was distinctly different, or even of opposite shapes, and thus defendant's devices did not infringe under the doctrine.
  
• Finally, the co-plaintiff\licensee was found to lack standing because it was a non-exclusive licensee. The only evidence it had offered on summary judgment for finding it to be an exclusive licensee was the company president's statement that its right to practice was "exclusive at the moment," but he had clarified that it was exclusive in the sense that Bicon was the only one doing it at that time.