Hill-Rom Serv., Inc. v. Stryker Corp.: No Departure from Plain and Ordinary Meaning; Erroneous Use of Judicial Estoppel

Category: Claim Construction 
 By: John Kirkpatrick, Contributor 
TitleHill-Rom Serv., Inc. v. Stryker Corp., No. 2013-1450 (Fed. Cir. June 27, 2014).
[1] Hill-Rom argues that the district court erred by limiting “datalink” to [...] a wired datalink. It argues that “datalink” should be given its plain and ordinary meaning[.] Hill-Rom at *4 (text added). [Similarly,] Hill-Rom argues that the “interface board including a processor” should be given its plain and ordinary meaning[.] Id. at *12 (text added).
[2] The parties also dispute [...] whether the claimed “message validation information” must verify that the message is properly received or received exactly, bit by bit, as sent. Id. at *17 (text added).
[3] [D]uring prosecution of a later, unrelated patent, U.S. Patent No. 8,121,856 [...], the examiner rejected claims as obvious over three references [including] [the Ulrich reference], which has the same specification as the [asserted U.S. Patent No. 5,699,038 (’038 patent)]. [...] In response, Hill-Rom added a limitation that the monitoring device receives a user request for a specific subset of data and that the specific subset of data be transmitted without transmitting the other available data. Hill-Rom argued that adding this limitation overcame the obviousness rejection because this added limitation was not disclosed in the Ulrich reference[.] [The district court, upon its conclusion that judicial estoppel prevented Hill-Rom from any broader construction] construed “bed condition message” as “a message not generated in response to any user request that contains the status of all conditions the bed is capable of monitoring.”
Id. at *19-20 (text added).
[1] There are no magic words that must be used, but to deviate from the plain and ordinary meaning of a claim term to one of skill in the art, the patentee must, with some language, indicate a clear intent to do so in the patent.
Hill-Rom Serv., Inc., at *7 (text added).
[2] A construction that would exclude the preferred embodiment “is rarely, if ever, correct and would require highly persuasive evidentiary support.”
Id. at *19 (internal citation removed, text added).
[3a] [W]e are bound by prior panel decisions. [...] [S]tatements made during prosecution of a later, unrelated patent cannot form the basis for judicial estoppel. [...] [3b] For judicial estoppel to apply, a parties’ later position must be clearly inconsistent with the earlier position.
Id. at *22 (text added).
Procedural History[Hill-Rom appeals] from the district court’s grant of summary judgment that Stryker [does] not infringe asserted claims of U.S. Patent Nos. 5,699,038 (’038 patent), 6,147,592 (’592 patent), and 7,538,659 (’659 patent).
Hill-Rom Serv., Inc., at *2 (text added).
Legal Reasoning (MOORE, Schall)
Relavant Claim LanguageClaim 1 of the ’038 patent, from which asserted claim 13 depends, contains three of the four disputed claim limitations and is treated by the parties as representative:

A bed status information system . . . comprising:

at least one bed condition input signal generator . . . ;

an interface board including a processor . . . said interface board operable for receiving said bed condition input signal and processing said input signal to create bed condition messages indicating the status of the monitored condition;

a processing station remote from the bed and coupled with said interface board by a datalink, the processing station operable for receiving said bed condition messages over the datalink and processing said messages . . . such that the status of the monitored condition of the patient bed is indicated to attending personnel at a location remote from the bed.

[...] Claim 17 of the ’592 patent includes the fourth disputed claim term and recites: “The patient monitoring system . . . wherein the message includes message validation information.” ’592 patent claim 17.

Hill-Rom at *3 (text added, emphasis removed).
[1] Plain and Ordinary Meaning of Claim Terms
Standard for Departing from the Plain and Ordinary Meaning of Claim TermsWe depart from the plain and ordinary meaning of claim terms based on the specification in only two instances: lexicography and disavowal. [...] “[T]his court has expressly rejected the contention that if a patent describes only a single embodiment, the claims of the patent must be construed as being limited to that embodiment.” [...] Disavowal requires that “the specification [or prosecution history] make[] clear that the invention does not include a particular feature[.]” [...] We found disclaimer when the specification indicated that the invention operated by “pushing (as opposed to pulling) forces,” and then characterized the “pushing forces” as “an important feature of the present invention.”
Hill-Rom Serv., Inc., at *4-6 (text added, internal citations removed).
No Words of Manifest Exclusion or Restriction[Hill-Rom] argues that “datalink” [...] encompasses both wired and wireless connections. Id. at *4 (text added). [...] There are no words of manifest exclusion or restriction. The patents-in-suit do not describe the invention as limited to a wired datalink. There is no disclosure that, for example, the present invention “is,” “includes,” or “refers to” a wired datalink and there is nothing expressing the advantages, importance, or essentiality of using a wired as opposed to wireless datalink. Nor is there language of limitation or restriction of the datalink. Nothing in the specification or prosecution history makes clear that the invention is limited to use of a cable as a datalink. Id. at *6-7 (text added).
The Absence of an Embodiment Does Not Limit Plain and Ordinary Meaning[The] disclosed embodiment undisputedly uses a cable to convey data, and the patent does not disclose an alternative embodiment that uses a wireless datalink. However, absent some language in the specification or prosecution history suggesting that the wired connection is important, essential, necessary, or the “present invention,” there is no basis to narrow the plain and ordinary meaning of the term datalink to one type of datalink—a cable. The absence of an embodiment teaching a wireless receiver does not prevent the claimed datalink from being given its plain and ordinary meaning at the relevant time.
Id. at *7 (text added).
Plain Meaning Construction Supported by Claim DifferentiationClaim 2 [of the ’659 patent ], which depends from claim 1, recites “[t]he system of claim 1, wherein the datalink comprises a wired datalink.” [...] The only distinction between claim 1 and claim 2 is the limitation that the “datalink” is a wired datalink. [...] “[T]he presence of a dependent claim that adds a particular limitation raises a presumption that the limitation in question is not found in the independent claim.” [...] This presumption is especially strong where the limitation in dispute is the only meaningful difference between an independent and dependent claim. [...] Of course, claim differentiation is not a hard and fast rule, and the presumption can be overcome by a contrary construction required by the specification or prosecution history. [...] However, nothing in this specification or prosecution history rebuts the presumption established by the doctrine of claim differentiation.
Id. at *9-10 (text added, internal citations removed).
Response to DissentThe dissent argues that our construction is incorrect because it defines “datalink” in functional terms. But, as we have previously explained, defining a particular claim term by its function is not improper and “is not sufficient to convert a claim element containing that term into a ‘means for performing a specified function’ within the meaning of [35 U.S.C. § 112(6)].” [...] Indeed, “[m]any devices take their names from the functions they perform. The examples are innumerable, such as ‘filter,’ ‘brake,’ ‘clamp,’ ‘screwdriver,’ or ‘lock.’” [...] There is nothing improper about defining “datalink” as a link that conveys data. If one of skill in the art at the relevant time would understand that datalinks can be both wired and wireless, then the patentee is entitled to the full range of that claim term.
Id. at *10-11 (text added, footnote removed, internal citations removed).
Contributor NoteSimilar reasoning is applied to determine the construction of the limitation an “interface board including a processor.”
[2] Message Validation Need Not Be Flawless
[The specificaton] suggests that the verification should determine whether exactly the same message was sent. [...] [If] the “message validation information” is required to accurately validate that the message sent is exactly bit-by-bit the same as the message received 100% of the time, then the only disclosed embodiment, the simple CHECKSUM, might not be covered by the claim language. A construction that would exclude the preferred embodiment “is rarely, if ever, correct and would require highly persuasive evidentiary support.” [...] [However,] patentee’s own disclosure contemplates an acceptable rate of error in the verification process in which the CHECKSUM embodiment can often, but not always, verify the message was received exactly as sent. Thus, the claimed validation need not be flawless to meet the claimed message validation information limitation.
Hill-Rom Serv., Inc., at *17-18 (text added, internal citations removed).
[3] Judicial Estoppel
[3a] Pfizer: Statements Made During Prosecution of Later, Unrelated Patent Cannot Be Used to Interpret Claims of the Patent at Issue[W]e decided this issue in Pfizer, Inc. v. Ranbaxy Laboratories, Inc., 457 F.3d 1284, 1290 (Fed. Cir. 2006), and are bound to follow Pfizer. [...] We held that “statements made during prosecution of the later, unrelated [...] patent cannot be used to interpret claims of the [patent at issue].”
Hill-Rom Serv., Inc., at *19-21 (text added, internal citation removed).
[3b] Prior Art iis Used for What it Discloses, but the Scope of the Claims Is Not Generally Limited to the Embodiments of the PatentHill-Rom’s current position, that “bed condition message” should be given its plain and ordinary meaning, is not clearly inconsistent with its statements during prosecution of the ’856 patent. None of the statements Hill-Rom made during the ’856 patent’s prosecution purport to define “bed condition message.” Instead, they generally describe the disclosure of the Ulrich reference or the Ulrich systems. [...] Acknowledging that Ulrich does not teach transmitting a subset of bed conditions therefore is not a clear limitation of claim scope. A patent is used as prior art in an anticipation or obviousness rejection for what it discloses. By contrast, the scope of the claims is not generally limited to the embodiments disclosed in the patent.
Id. at *22 (text added).
We reverse the district court’s grant of summary judgment of non-infringement and remand for further proceedings in view of this opinion.
Hill-Rom Serv., Inc., at *24.
REYNA, Circuit Judge, dissenting
General Grounds for DissentI dissent for three reasons. First, the intrinsic record is devoid of any description of a wireless “datalink” structure. Second, credible extrinsic evidence belies the majority’s conclusion that “datalink” encompasses wireless communications. Third, the majority relies on expert testimony that is conclusory and unreliable.
Hill-Rom Serv., Inc., Reyna Op., at *1.
Written Description Emphasizes a Physical StructureThis construction literally encompasses all data communication technology regardless of whether it existed in 1993 when the patents were filed, whether it was created yesterday, or whether it shall be created in the future. [...] [T]he context in which the “datalink” limitation is recited indicates that “datalink” must be more precise than anything that would “couple” or “communicatively couple” the interface board and the remote station. [...] [T]he written description emphasizes that a “datalink” is physical structure.
Id. at *2 (text added).
Future Application Directed to Wireless[T]he majority also disregards credible extrinsic evidence regarding the understanding of “datalink” in the context of the patents-in-suit. Specifically, the majority ignores that in 2007, fourteen years after the filing date of the patents-in-suit, Hill-Rom filed Patent Application No. 11/672,367 (“the ’367 application”), which was expressly directed to wireless bed connections. [...] As originally filed, the only material difference between claim 1 of the ’367 application and the inventions disclosed and claimed in the patents-in-suit was the explicit use of wireless communication technology[.]
Id. at *3-4 (text added, internal citation removed).
Patent Claim Cannot Have Different Meanings at Different Times[T]he expert report never expressly states that one of ordinary skill in the art in 1993 would understand that a “datalink” encompassed wireless connections. We have long recognized that, although the understanding of a claim term can evolve over time, the literal scope of a patent claim “cannot have different meanings at different times.” [...] Hill-Rom’s expert, however, testified before the district court that “datalink” needed no construction and provided explanations that were each phrased in the present tense.
Id. at *6-7 (text added, internal citation removed).  
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