United States Court of Appeals
for the Federal Circuit
__________________________
GREGORY W. BARAN, M.D.,
Plaintiff-Appellant,
v.
MEDICAL DEVICE TECHNOLOGIES, INC.,
Defendant-Appellee,
AND
AMT SVERIGE, AB (FORMERLY KNOWN AS
AMEDIC) AND ASCENDIA AB,
Defendants,
AND
GEDON AB AND ANDERS H. WEILANDT,
Defendants.
__________________________
2010-1058
__________________________
Appeal from the United States District Court for the
Northern District of Ohio in case No. 04-CV-1251,
Judge Kathleen M. O’Malley.
___________________________
Decided: August 12, 2010
___________________________
BARAN v. MEDICAL DEVICE TECH 2
STEVEN M. AUVIL, Benesch, Friedlander, Coplan &
Aronoff, LLP, of Cleveland, Ohio, argued for plaintiff-
appellant. With him on the brief was BRYAN J. JAKETIC.
MONICA L. THOMPSON, DLA Piper LLP (US), of Chi-
cago, Illinois, argued for defendant-appellee. With her on
the brief was STEVEN J. REYNOLDS.
__________________________
Before BRYSON, GAJARSA, and PROST, Circuit Judges.
BRYSON, Circuit Judge.
Dr. Gregory W. Baran filed suit against the defen-
dants (collectively, “MDTech”), alleging infringement of
U.S. Patent Nos. 5,025,797 and 5,400,798. The ’798
patent is a continuation-in-part of the ’797 patent, and
both patents are directed to automated biopsy instru-
ments. For the reasons stated below, we affirm the
district court’s entry of judgment in favor of MDTech as to
both patents.
I
In the automated biopsy instruments that are the
subject of this appeal, the biopsy needle is composed of a
stationary stylet and a retractable cannula that slides
over the stylet. After the cannula is pulled back against a
coil spring and cocked in the “charged” position, the stylet
is inserted into the patient’s body. When the cannula is
released from the charged position, the spring drives the
cannula forward over the inserted stylet to cut out a
biopsy sample. The entire needle is then removed from
the patient and the biopsy sample is extracted from the
cannula.
3 BARAN v. MEDICAL DEVICE TECH
The claimed devices are charged by pulling back an
external guide (to which the cannula is attached) along
the shaft until the guide locks in place. The locking
function is performed by a lever (22 in Figure 4, below)
that slides into a slot. Pressing the other end of the lever
releases the lock and allows the spring to send the can-
nula forward over the stylet.
’797 patent, fig. 4; ’798 patent, fig. 4.
In MDTech’s accused device, the BioPince Full Core
Biopsy Instrument (“BioPince”), the instrument is
charged by means of a slider-crank mechanism. The user
lifts the crank arm away from the device, which pushes a
connected slider unit to the front of the device where it
latches onto the cannula guide. The user then presses the
crank arm down toward the device, which pushes both the
slider and the cannula guide to the rear of the device. A
locking tab inserts through a slot in the crank arm and
locks the device in the charged position. Pressing a
trigger button at the back of the device detaches the
cannula guide from the slider, allowing the spring to send
the cannula and its guide forward. The following figure is
taken from MDTech’s patent and is an accurate represen-
tation of MDTech’s commercial device:
BARAN v. MEDICAL DEVICE TECH 4
U.S. Patent No. 6,322,523 B2, fig. 11.
Claim 2, the only asserted claim of the ’798 patent,
reads as follows (emphases added):
An apparatus for acquiring biopsy specimens, the
apparatus comprising in combination:
a) a biopsy actuator;
b) a cannula having a predetermined inner diame-
ter and having a distal end for insertion into a pa-
tient and having an opposing proximal end, said
proximal end having a first connector means se-
cured thereto;
c) a stylet means . . . said stylet means being de-
tachable from said cannula;
d) said biopsy actuator comprising a second con-
nector means for releasably and fixedly engaging
the first connector means, wherein the first con-
nector means and the second connector means are
5 BARAN v. MEDICAL DEVICE TECH
movable as a unit during acquisition of the biopsy
specimen,
e) said biopsy actuator comprising means for rap-
idly advancing the distal end of said cannula be-
yond the distal end of the stylet means to acquire
a core biopsy specimen.
The district court construed the term “detachable” in
claim 2 to mean that “the stylet is capable of being sepa-
rated or withdrawn from the cannula without loss or
damage.” The court found it significant that the specifica-
tion disclosed both a reusable embodiment and a single-
use embodiment, and that only the stylet of the reusable
embodiment was described as being “detachably engaged”
while the stylet of the single-use embodiment was de-
scribed as being “adhesively bonded.” The court rejected
the argument that an adhesively bonded stylet could also
be detachably engaged. Moreover, although the court
acknowledged that the construction of “without loss or
damage” might exclude the single-use embodiment from
claim 2, the court noted that it was not necessary for each
claim to cover every embodiment of the patent.
The district court construed the term “releasably” in a
similar manner, as requiring “separation without loss or
damage.” The court noted that claim 2 recited the second
connector means as being “releasably engag[ed],” and that
the specification described the same structure as being
“detachably affixed.” Accordingly, the court reasoned that
the patentee had used the terms “releasably” and “de-
tachably” with a similar meaning in mind. Based on that
cross-usage, the court applied essentially the same con-
struction to both terms.
BARAN v. MEDICAL DEVICE TECH 6
Following the issuance of the claim construction or-
der, Dr. Baran entered a stipulation acknowledging that
he could not prove infringement of the ’798 patent under
the “without loss or damage” construction as applied to
the terms “first connector” and “second connector.” Dr.
Baran reserved his right to appeal the claim construction
order.
As for the ’797 patent, the district court granted
summary judgment of noninfringement on the ground
that the accused BioPince device failed to satisfy two
limitations relating to the charging mechanism. Claim 7,
the only asserted claim of the ’797 patent, reads in perti-
nent part (emphases added): “A biopsy instrument com-
prising . . . a manually operable charging member for
moving the guide to the charged position against the
urging of the coil spring, and a release means for retaining
the guide in the charged position.”
The district court first considered whether the term
“member” should be limited to a single component or
whether it could encompass a multi-component structure.
The court ultimately adopted a construction that allowed
for the use of multiple components, but only if those
components operated in unison and not in a serial chain
of events. The court determined that the various compo-
nents of the slider-crank mechanism in the BioPince
device did not act in unison to move the cannula into the
charged position, and it therefore concluded that the
device did not satisfy the “charging member” limitation of
the ’797 patent.
In addition, the court concluded that the BioPince de-
vice did not satisfy the limitation reciting a “release
means for retaining the guide in the charged position.”
The court construed that limitation to be in means-plus-
7 BARAN v. MEDICAL DEVICE TECH
function format and to have two functions—retaining the
guide in the charged position and releasing the guide from
the charged position. The court then addressed whether
the BioPince device had corresponding structure that
performed the retention/release function. Dr. Baran
contended that the relevant corresponding structure in
the accused device was the combination of the crank arm
and the locking tab that holds the crank arm in the
charged position. Inserting the locking tab through the
appropriate slot in the crank arm would retain the guide
in the charged position; pulling the crank arm up and
snapping it out of the locked position would release the
cannula guide from the charged position. Therefore, Dr.
Baran argued, the crank arm and the locking tab consti-
tuted a structure in the accused device that performed
both the retention function and the release function. The
court accepted that argument over MDTech’s objection
that the only proper method of release was the trigger
mechanism, which did not perform the retention function.
The court ruled that the crank arm qualified as a means
for performing the release function in the BioPince device
because discharging the device in that manner did not
require physical alteration of the device. Nevertheless,
the court found no infringement because it concluded that
the crank arm and locking tab structure was substan-
tially different from the corresponding lever structure
disclosed in the specification of the ’797 patent.
II
A
In his challenge to the district court’s construction of
the ’798 patent, Dr. Baran advocates a definition for the
terms “detachable” and “releasably” that does not include
the “without loss or damage” condition. Dr. Baran objects
BARAN v. MEDICAL DEVICE TECH 8
to that condition because it excludes the single-use em-
bodiment from the asserted patent claim and therefore
precludes his infringement claim against the BioPince,
which is a single-use device.
As an initial matter, we accept Dr. Baran’s assertion
that the ’798 patent “never discloses a stylet that is joined
to a cannula.” The specification indicates that the stylet
60 is attached to a support rod 14, and that the cannula
66 is attached to a spring guide 18. The full needle is
then assembled by placing a coil spring “coaxially” onto
the stylet and placing the cannula “telescopically” over
the stylet and coil spring. The cannula remains an inde-
pendent component that slides freely over the stylet.
The fact that the stylet is not attached to the cannula,
however, is not favorable to Dr. Baran. If anything, it
lends further credence to the district court’s construction
of “detachable” as meaning “separation without loss or
damage,” because the stylet and cannula as described in
the specification are readily separable without loss or
damage.
9 BARAN v. MEDICAL DEVICE TECH
Of greater significance is the different language used
by the patentee to distinguish the single-use embodiment
from the reusable embodiment. In describing the reus-
able embodiment, the patent states that “the stylet 60 is
received and detachably engaged within the clevis 46 of
the spring guide 18. The thread 74 on the inner surface
72 of the collar 62 is engaged with the thread 56 on the
spring guide 18 to secure the cannula mount 58 to the
spring guide.” ’798 patent, col. 7, ll. 42-46. Figure 1
shows that the stylet is inserted into a notched recess on
the support rod from which it can be easily removed, 1 and
that the cannula is screwed onto the spring guide from
which it too can be easily removed.
By contrast, in describing the single-use embodiment,
the patent states that the assembly of the device is “quite
similar” except that “the stylet 262 is adhesively bonded
within the recess 246, and the base 262 of the cannula
mount 258 is similarly secured within the bore 255a.”
’798 patent, col. 10, ll. 22-27. Figure 5, which corresponds
to the single-use embodiment, shows that the clevis is
absent from the support rod, and that the screw threads
are absent from the spring guide. Instead, the stylet and
the cannula are glued permanently into the support rod
and the spring guide, respectively.
1 Although the specification states that the stylet is
inserted into the clevis of the “spring guide,” Figure 1
clearly shows that the clevis is located on the support rod.
BARAN v. MEDICAL DEVICE TECH 10
The patentee used the term “detachably” in the speci-
fication to draw a direct contrast between the removable
components of the reusable embodiment and the adhe-
sively bonded components of the single-use embodiment.
That usage effectively concedes that adhesively bonded
components—including the single-use embodiment—are
not “detachable” components within the meaning of the
patent. We agree with the district court that “[t]his
distinction suggests that the patentee intended ‘detach-
able’ to mean capable of removal or separation without
breaking or causing damage through the necessary use of
undue force.” Baran v. Med. Device Techs., Inc., 519 F.
Supp. 2d 698, 724 (N.D. Ohio 2007); see also K-2 Corp. v.
Salomon S.A., 191 F.3d 1356, 1365 (Fed. Cir. 1999)
(“Screws, unlike rivets and [adhesive] laminates, are
meant to be unscrewed, that is, to be removed. A rivet or
a laminate, to the contrary, is meant to remain perma-
nent, unremovable unless one is bent on breaking the
permanent structure apart.”). Incorporating the “without
loss or damage” condition into the claim construction has
the additional advantage of comporting with the plain
11 BARAN v. MEDICAL DEVICE TECH
meaning of “detachable,” as expressed by the several
dictionary definitions cited by the district court.
We also agree with the district court that the terms
“releasably” and “detachable” have the same meaning in
the ’798 patent. Dr. Baran argues that the use of differ-
ent terms implies that they have different meanings, see
CAE Screenplates Inc. v. Heinrich GmbH, 224 F.3d 1308,
1317 (Fed. Cir. 2000), but that implication is overcome
where, as here, the evidence indicates that the patentee
used the two terms interchangeably. See Tehrani v.
Hamilton Med., Inc., 331 F.3d 1355, 1361 (Fed. Cir. 2003).
In a final attempt to bring the single-use embodiment
within the scope of the asserted claim, Dr. Baran argues
that the district court’s claim construction improperly
excluded a preferred embodiment and ignored the Sum-
mary of the Invention. There is no force to either of those
arguments. It is not necessary that each claim read on
every embodiment. In this instance, while claim 2 reads
on only the reusable embodiment, a different claim of the
’798 patent (claim 18) reads on both the single-use and
the reusable embodiments,. See Helmsderfer v. Bobrick
Washroom Equip., Inc., 527 F.3d 1379, 1383 (Fed. Cir.
2008) (“It is often the case that different claims are di-
rected to and cover different disclosed embodiments.”);
Intamin Ltd. v. Magnetar Techs., Corp., 483 F.3d 1328,
1336-37 (Fed. Cir. 2007) (“[A] claim need not cover all
embodiments.”). As for the excerpt from the Summary of
the Invention, it simply repeats verbatim the claim lan-
guage that the “stylet means is . . . detachable from the
cannula” and that the “second connector . . . releasably
and fixedly engages the first connector.” ’798 patent, col.
3, ll. 50-60. The fact that those claim terms were used in
the Summary does not mean that they must be read to
encompass all the embodiments of the invention.
BARAN v. MEDICAL DEVICE TECH 12
Because we do not disturb the district court’s con-
struction of “releasably,” or the related constructions of
“first connector means” and “second connector means,”
Dr. Baran’s stipulation of noninfringement of the ’798
patent remains effective.
B
Dr. Baran also appeals the two grounds on which
summary judgment was entered as to the ’797 patent. We
conclude that no reasonable juror could find that
MDTech’s BioPince device satisfies the means-plus-
function limitation of “release means for retaining the
guide in the charged position.” That determination is
sufficient to affirm the district court’s judgment of nonin-
fringement; accordingly, we do not address Dr. Baran’s
additional arguments regarding the “charging member”
limitation.
In construing a means-plus-function claim, the dis-
trict court must first determine the claimed function and
then identify the corresponding structure in the written
description of the patent that performs that function.
Applied Med. Res. Corp. v. U.S. Surgical Corp., 448 F.3d
1324, 1332 (Fed. Cir. 2006). In order to prove literal
infringement of a means-plus-function claim, the plaintiff
must show that the accused device performs the recited
function through structure that is the same as or equiva-
lent to the corresponding structure set forth in the specifi-
cation. 35 U.S.C. § 112, ¶ 6.
Dr. Baran argues that the district court erred in con-
struing the claim to require both a release function and a
retention function. According to Dr. Baran, “release”
precedes the “means for” clause and therefore “is a modi-
fier of the limitation, rather than a functional recitation.”
13 BARAN v. MEDICAL DEVICE TECH
He urges that “release” should be construed to mean
“releasable,” which he explains is a characteristic and not
a function. Presumably, Dr. Baran believes that distinc-
tion to be significant because a characteristic would
describe something the structure is merely capable of
performing, not something the structure must perform.
We agree with the district court that the claim lan-
guage recites both a release function and a retention
function. Dr. Baran’s argument regarding the placement
of the term “release” is unavailing. The relevant inquiry
is whether the term at issue is purely functional. See
Signtech USA, Ltd. v. Vutek, Inc., 174 F.3d 1352, 1356
(Fed. Cir. 1999) (construing “ink delivery means” to be
equivalent to “means for ink delivery” because “ink deliv-
ery” was purely functional language); Al-Site Corp. v. VSI
Int’l, Inc., 174 F.3d 1308, 1318 (Fed. Cir. 1999) (“[W]hen it
is apparent that the element invokes purely functional
terms . . . the claim element may be a means-plus-
function element despite the lack of express means-plus-
function language.”). In the context of the ’797 patent,
the term “release” is not an idle description but a vital
function to be performed by the means-plus-function
element. The patent does not recite a biopsy instrument
that retains indefinitely without release; rather, the
contemplated function is to retain for the express purpose
of producing a spring-loaded release on demand. The
claim language ties both functions to the same means-
plus-function element, so it is appropriate that the ele-
ment be construed accordingly.
In the alternative, Dr. Baran argues that the question
whether the crank arm and locking tab structure fulfills
the retention/release limitation raises a disputed issue of
material fact and was not suitable for resolution on sum-
mary judgment. The district court concluded that the
BARAN v. MEDICAL DEVICE TECH 14
accused structure was substantially different from the
disclosed structure because the BioPince device requires
the locking tab to flex in a yielding manner for the release
to occur, while the patented invention relies on a lever
that must be rigid in order to pivot on its fulcrum. Dr.
Baran disagrees with the district court’s characterization
and claims that both structures flex to release the guide.
He bases that contention on two passages from the ’797
patent: the first states that one end of the lever is “flexi-
bly secured” to the other end by a “spot weld,” i.e., the
fulcrum; the second states that the release lever is “flexi-
bly welded” to the outer casing.
Again, we find that the district court did not err in
concluding that the accused structure was not equivalent
to the structure described in the specification. The two
structures rely on opposing principles: the lever facili-
tates the release by clearing the retention means from the
path of the guide, while the locking tab mechanism
achieves release only by overcoming the full resistance of
the retention means. Because of that structural differ-
ence, the lever must be rigid to release the guide, while
the locking tab must be flexible to do the same. The
references to “flexibility” that Dr. Baran cites from the
patent refer to the fact that the lever remains free to pivot
flexibly along the fulcrum, not that the lever itself is
made of flexible material. Indeed, it would be impossible
to operate a lever if it were made of highly elastic mate-
rial, just as it would be impossible to bypass a locking tab
if it were made of stiff, unyielding material. Accordingly,
we concur with the district court that the accused struc-
ture is substantially different from the disclosed structure
and therefore does not infringe pursuant to section 112,
paragraph 6.
15 BARAN v. MEDICAL DEVICE TECH
III
We also find no merit in Dr. Baran’s argument that
the district court erred by striking portions of the declara-
tion that he submitted in opposition to MDTech’s motion
for summary judgment. The declaration was a detailed,
22-page report attesting to Dr. Baran’s qualifications as
an expert, describing the asserted patent claims and the
accused device, and offering extensive opinion testimony
in support of his theories of infringement. The court
found that the “vast majority of [Dr.] Baran’s declaration
is opinion testimony based on ‘scientific, technical, or
other specialized knowledge within the scope of Rule
702,’” and that it was, “as a practical matter, an expert
report in which he provides his infringement opinion.”
Baran v. Med. Device Techs., Inc., 666 F. Supp. 2d 776,
779 n.2 (N.D. Ohio 2009). The court further found that
Dr. Baran had not identified himself as an expert, as
required by Federal Rule of Civil Procedure 26(a)(2), and
that his “expert report” was submitted well after the
deadline for exchanging expert reports established by the
court’s case management plan. As a result, the court held
that it would not consider Dr. Baran’s declaration “to the
extent it provides expert testimony.” Id.
Dr. Baran argues that his report should not have been
ruled untimely, because he was not a witness “retained or
specially employed to provide expert testimony” and
therefore was not required to prepare a written report
pursuant to Federal Rule of Civil Procedure 26(a)(2)(B).
But the fact that Dr. Baran was not required to prepare a
written report in the first instance does not mean that he
was exempt from the district court’s case management
deadlines once he opted to submit a written report. The
district court had broad discretion to fashion its case
management deadlines, and those deadlines applied to all
BARAN v. MEDICAL DEVICE TECH 16
expert reports, including ones not required by rule. See
Clarksville-Montgomery County Sch. Sys. v. U.S. Gypsum
Co., 925 F.2d 993, 998 (6th Cir. 1991); see also Esposito v.
Home Depot U.S.A., Inc., 590 F.3d 72, 77-78 & n.2 (1st
Cir. 2009). The district court was justified in excluding
Dr. Baran’s report to enforce compliance with those
deadlines.
AFFIRMED