Invalidation of Means Plus Function Patent Claim Requires Evidence of Corresponding Structure in Prior Art

Case: Fresenius USA, Inc. v. Baxter Int'l, Inc. , Fed. Cir. No. 08-1306 (Sep. 10, 2009)

The One Sentence Summary: The panel ruled on several issues, some for patentee and some for the defendant, including a ruling that a means plus function claim could not be invalidated when defendant had failed to produce evidence that the corresponding structure was present in the prior art.


What They Were Fighting About: The Federal Circuit panel considered an appeal from jury verdicts and judgment as a matter of law ("JMOL") rulings after a patent trial involving touch screens on dialysis machines.

Federal Circuit Holdings:

• Argument not raised in detail to trial court was waived.
• JMOL overriding jury's finding of obviousness of a dependent claim was error where jury could have relied on testimony that the independent claim was anticipated and the limitations of the dependent claim were obvious.
• Claim in Markush form was anticipated by prior art showing that any of the Markush alternatives was in the prior art.
• JMOL overriding jury finding of invalidity of means plus function claim proper where defendant failed to provide evidence that the structure corresponding to the function was in the prior art.
• JMOL overriding jury's finding of obviousness was improper where jury was presented evidence that it was obvious to combine a touch screen interface with a dialysis machine.
• Injunction remanded in light of court's reversal of certain JMOL rulings.
• In considering royalty, court may consider post-verdict sales of parts that were not part of jury's damages verdict.