Smith & Nephew, Inc. And John O. Hayhurst, M.D. v. Ethicon, Inc.

MICHEL, Circuit Judge,

dissenting.

I have a much different view of this case. Because none of the- seven claims here even remotely suggests that one need apply “tension” to the suture in order to make the legs of the claimed anchor member dig into the cancellous bone tissue and because our precedents counsel against using the term “comprising” to include disclosed but unclaimed subject matter, the district court correctly concluded that, as a matter of law, the '557 patent does not cover Ethicon’s accused method, which indisputably requires this “tensioning” step. Indeed, one of the asserted claims in this case expressly disclaims the need for “any manipulation of the [anchor] member other than inserting the member into the bone.”

And indeed, the inventor himself agreed (whether he realized it or not) with this construction, testifying that his claimed method for making the anchor member ready for tissue attachment does not require any post-insertion step — like applying tension to the suture — after the surgeon had inserted the anchor member into the bone hole. The majority cannot reasonably minimize this “tensioning” step as extraneous; as indicated, by disclosing the step in the specification but by failing to include it in the claims, Smith & Nephew *1313simply dedicated that step to the public. A member of the public (Ethicon) so used it. S & N cannot now recover what it had previously dedicated. I must dissent.

I.

. In Maxwell v. J. Baker, Inc., “we reiterated the well-established rule that ‘subject matter disclosed but not claimed in a patent application is dedicated to the public.’ ” 86 F.3d 1098, 1106-07 (Fed.Cir.1996) (quoting Unique Concepts, Inc. v. Brown, 939 F.2d 1558, 1562-63 (Fed.Cir.1991) and citing Miller v. Bridgeport Brass Co., 104 U.S. 350, 352, 26 L.Ed. 783 (1881)). This rule, we held, prohibited both a finding of literal infringement and of infringement under the doctrine of equivalents because, otherwise, an applicant could “present a broad disclosure in the specification of the application and file narrow claims,” thereby “avoiding examination of broader claims that the applicant could have filed consistent with the specification.” Id. at 1107 (citing Genentech, Inc. v. Wellcome Found. Ltd., 29 F.3d 1555, 1564 (Fed.Cir.1994); International Visual Corp. v. Crown Metal Mfg. Co., 991 F.2d 768, 775 (Fed.Cir.1993)). In addition, the rule comports with (among other principles) the statutory requirement of distinctly claiming the “ ‘subject matter which the applicant regards as his invention.’ ” Id. (quoting 35 U.S.C. § 112).

Applying the dedication-to-the-public rule, we determined that because the pat-entee there had merely disclosed, but not claimed, an “alternative” for having a shoe’s “fastening tabs ... stitched into the lining seam of the shoes,” the patentee had thereby deprived the Patent and Trademark Office from considering the patenta-bility of that alternative. Id. at 1108. Further, we reasoned that a person of ordinary skill in the “shoe industry” would conclude that the failure to claim the disclosed “alternate shoe attachment systems” meant the patentee there had simply “dedicated the use of such systems to the public.” Id. Accordingly, we held that no complaint for literal infringement or for infringement by equivalents could lie. Id.

So too does the rule apply here. Like Ethicon’s accused method and device, the '557 patent’s “Summary of the Invention” and its “Description of Preferred Embodiments” both disclose embodiments that need to have “tension applied to the [anchor member’s] suture” in order to have the “ends of the [anchor member’s] legs dig into the bone and resist removal of the anchor member from the hole” drilled into the bone. (See, e.g., J.A. 150, Col. 3, Lines 1-6; see also Col. 9, Lines 45-49 (“With the outer edges of the legs bearing upon the bone, any tension applied to the suture causes the sharp edges ... to dig into the bone to secure the anchor member within the hole.”).) But nowhere do any of the claims themselves recite a step about “applying tension to the suture” in order to have the claimed anchor member’s legs dig into the bone. (See generally J.A. 154, Col. 11 and Col. 12.)

To the contrary, one of the asserted claims expressly disclaims any step of applying tension to expand the anchor’s legs. Claim 6 — a claim directed at applying the claimed method when, as here, one needs to set the member inside the bone — claims the step of “inserting the [anchor] member into the [bone] hole ... such that the member lodges within the hole in the absence of any manipulation of the member other than inserting the member into the hole.” (See J.A. 154, Col. 12, Lines 17-20) (emphasis added). In other words, one practicing the invention need only insert *1314the anchor into the hole to have the anchor legs automatically “resile” and dig into the bone. (See id.)

The other three independent claims require more or less, stating (among other things) the steps for “attaching tissue to the suture so that the tissue is secured against the bone” (claim 1), “deforming the [anchor] member in a manner such that the member resiles [expands] against the portion of the bone” (claim 2) and “lodging the [anchor] member within the hole by pressing the member with attached suture into the hole” (claim 3). But “more” in this case cannot mean (under the claim differentiation doctrine) that the claims engulf an entirely new and different step, the step of applying “tension” to the suture, see Kraft Foods v. International Trading Co., 203 F.3d 1362, 1368 (Fed.Cir.2000) (“ ‘[C]laim differentiation cannot broaden claims beyond their correct scope’ ”) (citations omitted); to find otherwise would mean we could read any disclosed but unclaimed alternative into a claim, in derogation of our “well-established rule” about public dedications. Worse, it would mean that (as more fully discussed below) a court could return to the applicant what the applicant had also expressly disclaimed, both during prosecution and even later in litigation. Courts should merely give effect to the words used in a claim, not re-write or even resurrect them.

The majority states that the '557 patent instructs “[s]urgeons ... to tug on the suture after the anchor is pressed into the bone, to assure that it is securely seated.” But its opinion does not identify whether that instruction appears in the claims, the written description or any other portion of the specification. In any event, that instruction certainly does not appear in the language of the claims, the most critical portion of the patent. And when the language about tugging on or applying pressure to the suture expressly appears in the written description, it does so for the purpose of asserting that a “tug” will cause or help cause the anchor to lodge itself within the bone, i.e., that tug does more than simply “assure” that the anchor is lodged within the bone. (See, e.g., J.A. 150, Col. 3, Lines 4-6 (“Whenever tension is applied to the suture, the ends of the legs dig into the bone -”) (emphasis added); J.A. 153, Col. 9, Lines 54-60 (“As a result, tension in the suture (in conjunction with the intrinsic resilient force of the anchor member 80 that forces the leg edges 87 apart) tends to lodge the edges 87 of the anchor-member legs beneath the cortical layer 97, rendering the anchor member substantially irremovable from this hole 100.”)) (emphasis added).

As even the disclosed-but-unclaimed language would have it, then, S & N’s device and process would indeed “require a surgeon’s tug to assure that the anchor is set within the cancellous bone,” contrary to my esteemed colleagues’ interpretation. Simply put, nothing in the claims or specification suggests that a surgeon should tug on or apply tension to the suture solely to “assure” or “confirm” that the anchor has become lodged in the bone. But again, the claims say nothing of “tensioning” for any reason, leaving it to the resiliency of the legs alone to complete the necessary “lodging” step.

II.

The majority also indicates that I have misapplied the public-dedication analysis and misread Maxwell, though a review of that decision shows (contrary to my colleagues’ assertion) that Maxwell, its predecessors and its progeny apply with equal *1315force to situations involving infringement by equivalents and literal infringement. E.g., 86 F.3d at 1107 (“We have frequently applied this [public-dedication] rule to prohibit a finding of literal infringement when an accused infringer practices disclosed but unclaimed subject matter.”) (citing Envtl. Instruments, Inc. v. Sutron Corp., 877 F.2d 1561, 1564 (Fed.Cir.1989)). Further, the majority uses the term “comprising” to mean that the '557 patent requires not only the steps of lodging the member anchor and attaching tissue to the suture, but also the unclaimed step of applying “tension” to the suture.

True, we have recognized that “comprising” generally signifies that the “claims do not exclude the presence in the accused apparatus or method of factors in addition to those explicitly recited.” See Vivid Tech., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 811 (Fed.Cir.1999). But as Ethi-con correctly asserts, we have also held that an applicant cannot use this open-ended term to recapture what he had otherwise given away. See, e.g., Spectrum Int’l, Inc. v. Sterilite Corp., 164 F.3d 1372, 1380 (Fed.Cir.1998) (“Neither may the term ‘comprising’ alter the scope of the merger element in the claim at issue here. ‘Comprising’ is not a weasel word with which to abrogate claim limitations.”); Moleculon Research Corp. v. CBS, Inc., 793 F.2d 1261, 1271 (Fed.Cir.1986) (rejecting as “far too broad” the argument that “comprising” opened the claims to additional steps and additional limitations not contained in the accused method).

And in this case, the majority is using this “weasel word,” see Spectrum International, 164 F.3d at 1380, to obliterate our “well-established rule,” see Maxwell, supra, against giving effect to disclosed but unclaimed subject matter. Thus, the majority implies that applicants may now avoid the Maxwell bar by simply including in every claim the term “comprising,” as if that term alone can magically shore up whatever shortcoming (intentional or not) the claim had before it became the subject of litigation. I believe that our jurisprudence and indeed the statutory requirement for “distinctly claiming” , one’s invention require more than this simple flick of the “comprising” switch.

III.

The majority, in my view, also cannot reasonably equate the '557 patent’s “lodge” or “lodging” claim limitation with the “tensioning” needed to have Ethicon’s accused device kick-out its legs into the bone. The specification indicates that these are separate steps, ones that follow each other. But again, only the “Summary of the Invention” and the “Description of Preferred Embodiments” reference an embodiment that recites the need to have “tension applied to the suture [to] eause[ ] the sharp edges [of the anchor member] to dig into the bone to secure the anchor member within the hole.” {E.g., J.A. 153, Col. 9, Lines 46-49.)

As discussed above, the claims omit this step. Claims 1-3 state only that one must “lodg[e] the [anchor] member in the hole by pressing the member with attached suture into the hole.... ” (See J.A. 154, Col. 11, Lines 7-8, 15-16 and Col. 12, Lines 1-2.) Claim 2, moreover, recites the method by which the anchor member does dig into the bone: By “deforming the member in a manner such that the member resiles against the portion of the bone that defines the hole.” {See J.A. 154, Col. 11, Lines 18-20) (emphasis added). Read in context, this claim can only mean what the specification repeatedly indicates will occur when *1316the anchor member’s “resilient material” (J.A. 152, Col. 8, Line 58) or “intrinsic resilience of the anchor member” (J.A. 153, Col. 9, Lines 21-22; J.A. 153, Col. 10, Lines 51-52) is allowed to “relax” and assume its natural shape: the “resilient” anchor automatically kicks out its legs or “resiles,” causing the legs to dig into the bone and thereby allowing for the next step of the claimed method (the attaching of tissue to the suture so as to secure the tissue against the bone) to go forward. (See, e.g., J.A. 153, Col. 10, Lines 50-54.)

Claim 6, as noted earlier, does not help Plaintiff Appellant S & N, not only because S & N cannot rely on a narrower claim to incorporate an entirely new “ten-sioning” step; but also because that claim, too, merely confirms that the patent faded to claim this step. The claim makes clear that the anchor member will become “lodge[d] within the hole in the absence of any manipulation of the member other than inserting the member into the hole.” (See J.A. 154, Col. 12, Lines 18-20.) And again, this can only mean that the anchor member will automatically lodge into the bone and become ready for the subsequent attaching of the tissue, without any intermediate step of applying tension to the suture. This is not an insignificant element of the claimed invention. As the specification itself states, this claimed albeit “simple mechanism for [automatically] anchoring the anchor member in bone ... [provides] a means for reattaching tissue to the bone to promote healing.” (See J.A. 153, Col. 9, Lines 25-28.)

The extrinsic evidence confirms this reading of the '557 patent. The inventor, Dr. Hayhurst, admitted at his deposition that one would not be practicing claims 1, 2, 3 or 6 of the '557 patent if one had to perform any “further manipulation of the anchor member other than merely pressing it into the hole in order to lodge it within the hole.” (See J.A. 6443-44.) And at the Markman hearing, Dr. Hayhurst conceded that his “device” was “ready to have tissue attached to it,” i.e., ready to have the last stage of the claimed method performed, “without first pulling back on the suture.” (See J.A. 7438) (emphasis added).

Stated differently, the '557 patent avoids the need to have tension applied to the suture or anchor member in order to have the anchor’s legs resile, dig into and thereby lodge themselves within the bone; the resilient nature of the legs themselves causes them to automatically kick-out and thereby lodge themselves within the bone once the surgeon has “press[ed] [them] into the hole.” (See J.A. 6443-55; J.A. 7438.) By relying on a novel standard of “reasonable practice of the method taught in the patent” and by therefore assigning the claims a contrary construction, the majority has (among other things) added a step that Dr. Hayhurst himself eschewed.

IV.

Finally, no genuine issue of material fact exists about whether Ethicon’s accused method infringes the correctly construed '557 patent. Courts should grant summary judgment, of course, when no genuine issue of material fact remains and the movant warrants judgment as a matter of law. Vehicular Tech. Corp. v. Titan Wheel Int’l Inc., 212 F.3d 1377, 1381 (Fed.Cir.2000). The non-moving party, moreover, cannot defeat summary judgment simply by insisting that a genuine dispute exists or even by proffering some evidence; in any case, the non-moving party (provided that this party bears the ultimate burden of proof, as with S & N here) *1317must produce evidence that a reasonable jury could find sufficient to prove, e.g., that the accused device contains all the limitations set forth in the patent claims. See Zodiac Pool Care, Inc. v. Hoffinger Indus., Inc., 206 F.3d 1408, 1414-15 (Fed.Cir.2000) (affirming summary judgment on claim alleging literal infringement when no reasonable juror could find, based on the evidence presented, that the accused devices contained all the limitations set forth in the claimed invention); see also Vehicular Tech. Corp., 212 F.3d at 1382.

The record here establishes beyond reason that, unlike the claimed invention, the accused method does require the additional step of tensioning the suture in order to fix the anchor within the bone hole and to thereby make it “ready” for the attachment of tissue. S & N has not identified any evidence that could reasonably rebut the packaging instructions that Ethicon included with every anchor, instructions that direct surgeons to pull back on (i.e., apply “tension” to) the anchor in order to ready it for tissue attachment. (S & N’s product instructions, mentioned by the majority, do not factor into either the claims construction or infringement analysis. We examine the former using primarily the intrinsic evidence — the claims, the specification and, if in evidence, the prosecution history; and in the rare case we will resort to extrinsic evidence. We examine the latter by analyzing whether the accused device contains all the limitations claimed by the patent at issue.) Nor did S & N offer any evidence that could rebut the expert testing results showing that Ethicon’s anchor would move outwardly from the bone hole absent a tensioning step.

Equally significant, S & N offered no evidence that could reasonably rebut the evidence showing that movement of an unsecured anchor would result in failed surgeries. The advertising materials that S & N did offer still do nothing to change this conclusion. For one thing, Ethicon itself did not draft these materials, so they do not even necessarily constitute a party-opponent admission, let alone a damaging admission. And these advertisements say nothing, one way or the other, about having to apply tension to Ethicon’s suture. No reasonable juror would take those advertisements and somehow convert their silence into an admission that contradicts the express instructions that Ethicon itself drafted. Nor should we.

And last, I find inapplicable our rule that an accused device will infringe the claimed invention so long as that device contains all the limitations claimed in the patent, even if the device merely adds more steps or features. As discussed, the '557 patent emphasizes the importance of having resilient legs, since that resiliency enables the claimed invention to lodge itself within the bone as soon as the anchor enters the soft, cancellous layer. But as the evidence shows, the accused device does not have legs that automatically kick-out or resile and thereby lodge the anchor within the bone; so rather than merely adding a step or feature to the invention claimed by the '557 patent, the accused device simply does not contain that step or feature at all, i.e., it does not contain all the elements claimed by the patent. See, e.g., Vehicular Tech. Corp. v. Titan Wheel Int’l, Inc., 141 F.3d 1084, 1089 (Fed.Cir.1998) (infringement exists only if all limitations of the claim appear, either literally or by equivalents, in the accused product or process).

The majority, however, brushes aside any detailed examination of the evidence actually offered by the parties. Merely *1318disputing a material fact, or even pointing to Ethicoris advertising materials, should not defeat summary judgment when no reasonable juror could examine that evidence and find in S & N’s favor. Because of today’s decision, I fear that we have inadvertently and improperly raised the bar for summary judgment in actions alleging patent infringement.

V.

To summarize, the specification (other than the claims themselves) does disclose the need to have “tension” applied to the claimed suture in order to make the claimed anchor member ready for the attachment of tissue to the bone. But nowhere do any of these claims actually recite this step, meaning the patentee has dedicated it to the public. Ethicon, therefore, could reasonably conclude as such and could lawfully use that step in its accused method.

The use of the term “comprising” should not change this reading of the patent. Our precedents have cautioned that while “comprising” is an open-ended term, it is not a tool for recapturing what the applicant had otherwise surrendered. In this case, as noted, S & N did just that, dedicating to the public the step of applying tension to the anchor member’s suture. Nor should we allow a “weasel word” like “comprising” to nullify the public-dedication rule, well settled in our precedent.

Further, the limitation “lodged” or “lodging” as used in the various claims excludes the disclosed-but-unclaimed ten-sioning step. The specification repeatedly refers to the “resilient” nature of the claimed anchor’s legs and the claims themselves indicate that these legs will “resile” or expand automatically simply because of their resiliency, i.e., no additional tension-ing step is needed after all. The testimony by the inventor Dr. Hayhurst himself confirms that, indeed, a surgeon or other person practicing the '557 patent does not need to apply tension to the suture in order to make the anchor’s legs dig into the bone.

Last, S & N has failed to identify any evidence that would lead a reasonable juror to conclude that Ethicoris accused method similarly or literally requires that its accused anchor also automatically kick-out the legs after entering the hole in the bone. Again, Ethicon produced the instructions it included with every package of anchors and these instructions directed surgeons to apply tension to the anchor’s suture. In addition, Ethicon produced expert testing results showing that a surgeon needed to apply this tension in order to set the anchor before attaching the tissue; otherwise, the unrebutted evidence shows, unsuccessful surgeries could result and patients would not heal.

The only evidence that S & N did offer in rebuttal — advertisements drafted by a third party — could not lead a reasonable juror to reach a different outcome. Ethi-con itself did not draft these advertisements and nothing in the advertisements even contradicts what Ethicoris instructions and expert testing results established beyond genuine dispute.

I respectfully dissent.