United States Court of Appeals for the Federal Circuit
05-1172
NORIAN CORPORATION,
Plaintiff-Appellant,
v.
STRYKER CORPORATION,
Defendant-Appellee.
Brian M. Poissant, Jones Day, of New York, New York, argued for plaintiff-
appellant. With him on the brief were Daniel L. Malone and Eric C. Stops.
Gregory J. Vogler, McAndrews, Held & Malloy, Ltd., of Chicago, Illinois, argued
for defendant-appellee. With him on the brief were Timothy J. Malloy, Sandra A.
Frantzen, and John L. Abramic.
Appealed from: United States District Court for the Northern District of California
Judge William H. Alsup
United States Court of Appeals for the Federal Circuit
05-1172
NORIAN CORPORATION,
Plaintiff-Appellant,
v.
STRYKER CORPORATION,
Defendant-Appellee.
___________________________
DECIDED: December 6, 2005
___________________________
Before NEWMAN, RADER, and BRYSON, Circuit Judges.
BRYSON, Circuit Judge.
This patent case comes before us for a second time. On the first appeal, we
reversed the district court’s grant of summary judgment of noninfringement, which we
held was based on an unduly restrictive claim construction. Norian Corp. v. Stryker
Corp., 363 F.3d 1321 (Fed. Cir. 2004). On remand, the district court again entered
summary judgment of noninfringement based on its construction of a different claim
limitation. Norian Corp. v. Stryker Corp., C.A. No. 01-00016 (WHA) (N.D. Cal. Dec. 3,
2004). We affirm.
I
The patent in suit, U.S. Pat. No. 6,002,065 (“the ’065 patent”), is owned by
appellant Norian Corporation. As the district court explained, the patent is directed to
kits “for preparing rapidly setting calcium phosphate compositions to be used as ‘bone
cements’ in medical or dental procedures.” The asserted claims of the ’065 patent are
claims 8-10. Claim 8 provides as follows:
A kit for preparing a calcium phosphate mineral, said kit consisting of:
at least one calcium source and at least one phosphoric acid
source free of uncombined water as dry ingredients; and
a solution consisting of water and a sodium phosphate, where the
concentration of said sodium phosphate in said water ranges from 0.01 to
2.0 M and said solution has a pH in the range of about 6 to 11.
Dependent claim 9 recites the kit of claim 8 wherein the sodium phosphate is
present in the water at a concentration ranging from about 0.05 to 0.5 M. Dependent
claim 10 recites the kit of claim 8 wherein the solution has a pH in the range from about
7 to 9.
The issue before the district court was very narrow. It was undisputed that the
accused kit sold by Stryker consisted of a vial of powdered material containing sources
of calcium and phosphoric acid, a spatula, and a syringe filled with a 0.25 M sodium
phosphate solution. The solution was made from two different sodium phosphates:
monobasic sodium phosphate monohydrate and dibasic sodium phosphate
heptahydrate. The question posed to the district court was whether Stryker’s sodium
phosphate solution was “a solution consisting of water and a sodium phosphate” within
the meaning of that portion of claim 8. That question turned on whether the district
court construed the claim term “a sodium phosphate” to include a solution prepared
from one or more sodium phosphates, or whether the term was limited to a solution
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prepared from only a single sodium phosphate. The district court concluded that the
claim term required that the solution be made from only a single sodium phosphate.
Because it was undisputed that Stryker’s solution was made from more than one
sodium phosphate, the court ruled that Stryker’s solution did not infringe Norian’s
patent. Norian appeals, contending that the district court’s claim construction was too
narrow, and that the term “solution consisting of water and a sodium phosphate” should
be construed to include solutions made from multiple sodium phosphates and should
not be limited to solutions made from only a single sodium phosphate.
II
It is undisputed that there are multiple types of sodium phosphates. The ’065
patent refers to several of them: monobasic sodium phosphate, which contains one
sodium atom, two hydrogen atoms, and one phosphate group; dibasic sodium
phosphate, which contains two sodium atoms, one hydrogen atom, and one phosphate
group; and trisodium phosphate, which contains three sodium atoms and one
phosphate group. Each of the sodium phosphates can be associated with different
numbers of water molecules.
Norian argues that its claims read on any solution made from a single sodium
phosphate as well as any solution made from a combination of different sodium
phosphates. The claim term “a sodium phosphate,” according to Norian, should be
understood to embrace a mixture of multiple types of sodium phosphates as well as a
single sodium phosphate. That construction makes sense, according to Norian,
because once the various sodium phosphates are put into a water solution, they
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dissociate into ions, and the same ions are present in the resulting solution regardless
of which type or types of sodium phosphates were used as the starting materials.
The district court rejected Norian’s argument on several grounds. First, the court
noted that the asserted claims use the restrictive term “consisting of” to define the
contents of the claimed solution. In that context, the court explained, the term “a” must
be interpreted to mean that the solution consists of water and only a single solute, i.e., a
single type of sodium phosphate, not a mixture of different sodium phosphates. The
court found support for that interpretation in the specification, which contains repeated
references to solutions made from a single sodium phosphate, but contains no
reference to making the solution from more than one sodium phosphate. In addition,
the court noted that claim 8 uses the phrase “at least one” in the first limitation, which
refers to sources of calcium or phosphoric acid, but does not use that phrase in the
second limitation, which refers to the ingredients of the solution. The court pointed to
the use of the term “a” rather than the phrase “at least one” as indicating that only a
single type of sodium phosphate is used in the claimed solution. Finally, the court ruled
that the prosecution history of the ’065 patent shows that the patentee surrendered the
claim scope that was encompassed by the phrase “a sodium phosphate solution” in the
predecessor to claim 8 when the patentee amended that language to read “a solution
consisting of water and a sodium phosphate.”
We agree with the district court’s construction of the claim language. The patent
contains multiple references to various different sodium phosphates. In that context, the
reference in the claim to “a sodium phosphate” is most naturally understood as a
reference to one of the different sodium phosphates. As the district court pointed out,
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the language used to claim the solution in claim 8 is different from the formulation used
in the same claim to describe the sources of calcium and phosphoric acid, where the
claim refers to “at least one calcium source and at least one phosphoric acid source.” If
the patentee had meant to claim the use of at least one type of sodium phosphate in the
recited solution, it would have been simple to use the same language in the second
portion of the claim that was used in the first.
Even aside from the departure from the “at least one” phrase used in the first
limitation, the word “a” is conspicuous in the phrase “a sodium phosphate.” Although
the word “a” generally means “one or more” in open-ended claims containing the
transitional phrase “comprising,” KCJ Corp. v. Kinetic Concepts, Inc., 223 F.3d 1351,
1356 (Fed. Cir. 2000), that general rule does not apply when the specification or the
prosecution history shows that the term was used in its singular sense. See, e.g., Elkay
Mfg. Co. v. Ebco Mfg. Co., 192 F.3d 973, 977-79 (Fed. Cir. 1999) (noting that “our
cases emphasize that ‘a’ or ‘an’ can mean ‘one’ or ‘more than one,’ depending on the
context in which the article is used,” and holding that the phrase “comprising . . . an
upstanding feed tube” is limited to a single such feed tube based on the prosecution
history); AbTox, Inc. v. Exitron Corp., 122 F.3d 1019, 1023-27 (Fed. Cir. 1997) (limiting
the phrase “comprising . . . a metallic gas-confining chamber” to a single such chamber
based on context gleaned from the specification). In particular, this court has
interpreted the word “a” in its singular sense when, as in this case, it has been used in
conjunction with the closed transitional phrase “consisting of.” See Abbott Labs. v.
Baxter Pharm. Prods., Inc., 334 F.3d 1274, 1281 (Fed. Cir. 2003) (“[A]lthough ‘a’ without
more generally could mean one or more in an open-ended patent claim, ‘a’ with
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‘consisting of’ in this case indicates only one member of a Markush group.”). Thus, the
claim language “consisting of . . . a sodium phosphate,” on its own, suggests the use of
a single sodium phosphate.
That interpretation is consistent with the specification, as the district court ruled.
In particular, example 3 of the specification includes a chart listing the different setting
times that are associated with different solutions. Each of the listed solutions contains a
single solute, which is either a type of sodium phosphate or a type of sodium carbonate.
While the scope of a claim is not necessarily limited to the examples disclosed in the
specification, nothing in the ’065 patent specification points away from the district court’s
construction limiting claim 8 to single-solute solutions. Rather, each of the solutions
described in the specification uses only a single solute, and the specification makes no
reference to using a mixture of multiple solutes in a single solution.
Norian has argued that the specification contains references to solutions made
from multiple types of sodium phosphates. In reissue proceedings before the Patent
and Trademark Office, Norian argued that example 3 mentions a solution made from a
mixture of trisodium phosphate dodecahydrate and dibasic sodium phosphate
heptahydrate. ’065 patent col. 10, ll. 46-50. However, as the PTO pointed out, that
solution is not the solution recited in claim 8, but instead is a “colloid control” used in
connection with the claimed solutions described in example 3. Norian also argues that
example 2 supports its claim construction through its reference to “Sigma Diagnostics
1.0 M Phosphate Buffer,” an “off the shelf” buffer solution. ’065 patent, col. 9, ll. 52-59.
Norian contends that off-the-shelf buffer solutions are made from mixtures of multiple
types of sodium phosphates. However, the trial court concluded based on the evidence
05-1172 6
of record that Sigma’s phosphate buffer solution was made from potassium phosphates,
not sodium phosphates, and that the use of the term “phosphate buffer” does not imply
that the buffer solution was made from multiple forms of sodium phosphates, or even
any sodium phosphates at all. Thus, nowhere in the specification does the patentee
refer, either explicitly or implicitly, to making the claimed solution from a mixture of
multiple sodium phosphates.
The district court was also correct to rely on the prosecution history, which
reflects a series of patentability rejections, followed by narrowing amendments and
clarifying explanations from the prosecuting attorney. The prosecution history shows
that through the series of amendments, Norian surrendered significant scope for what
became claim 8. In response to one series of rejections, Norian narrowed the claim by
changing the transitional phrase in the claim’s preamble from “comprising” to “consisting
essentially of” and then ultimately to “consisting of.” In response to another rejection,
Norian amended the critical claim language by replacing the words “a sodium
phosphate solution” with the words “a solution consisting of water and a sodium
phosphate.” The prosecuting attorney advised the examiner that the amendment
“limit[ed] the claimed kit to one in which the solution is made of water and a single
solute, where the solute is either a sodium phosphate or a sodium carbonate, which
solute is completely dissolved in the water” (emphasis added).
If there were any doubt that the reference to “a sodium phosphate” meant a
single type of sodium phosphate, the prosecuting attorney directed the examiner to the
specification’s tables for examples of the single-solute solutions to which the amended
claim was limited. As the prosecuting attorney noted, the tables disclose “solutions of
05-1172 7
different sodium phosphates”: one solution is made from monobasic sodium
phosphate, another from dibasic sodium phosphate, and a third from trisodium
phosphate. But none of the solutions is made from a mixture of different sodium
phosphates. In other words, the specification contemplates the use of various forms of
sodium phosphate, but used individually, not simultaneously in the same solution. As
the prosecuting attorney explained, the claim was limited “with the incorporation of the
additional limitation limiting the solution to one that consists of water and a sodium
phosphate.”
Other references in the prosecution history underscore the restrictive scope that
was accorded to the claim language. Thus, the prosecuting attorney explained that “the
solution is limited to one that is made of water and a solute selected from a sodium
phosphate or sodium carbonate,” and that “the claimed kits of the present application
are limited to kits in which the setting liquid is a solution of water and a solute, where the
solute is either a sodium phosphate or a sodium carbonate.” The district court properly
construed that language to limit the scope of the claim at issue in this case to a single
solute in the water solution, i.e., to a single type of sodium phosphate.
Norian makes essentially three arguments in response to the district court’s claim
construction. First, Norian argues that after any sodium phosphate salt goes into
solution, it does not maintain its solid, compound form, and thus it ceases to be
identifiable as, for example, monobasic sodium phosphate monohydrate or dibasic
sodium phosphate heptahydrate. Instead, it dissolves into dissociated sodium ions and
phosphate ions in water. Therefore, according to Norian, the reference to “a sodium
phosphate” in a water solution can only mean a solution containing sodium ions and
05-1172 8
phosphate ions, which solution will be produced when any one or more types of sodium
phosphates are added to water.
The problem with that argument is that it runs afoul of the language and the
prosecution history of the ’065 patent. In the claim language, the specification, and the
prosecution history, the patentee described the claimed solution by reference to the
substances used to make it—solutes that include a variety of different types of sodium
phosphates. The patentee could have chosen to claim the solution as “a sodium
phosphate solution,” as was recited in an earlier version of the claims, or as a solution
consisting of “at least one sodium phosphate,” which would have tracked the language
used in the first limitation of claim 8. Instead, the patentee departed from those
formulations and chose to recite a solution consisting of water and “a sodium
phosphate.” In context, that language denotes a solution made from water and a single
solute drawn from among the various types of sodium phosphates.
Norian’s second argument is that the prosecution history cannot be read as
broadly as the district court read it. Norian explains that the amendment in question
(i.e., amending the language from “a sodium phosphate solution” to “a solution
consisting of water and a sodium phosphate”) was made in response to a prior art
patent to Iwamoto, which disclosed a colloidal setting solution, rather than a pure
solution containing no suspended particles. Because the sole purpose of the
amendment was to avoid the effect of the Iwamoto reference, Norian argues, the
prosecution history should not be interpreted as disclaiming pure solutions that are
made from more than a single solute.
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The problem with that argument is that there is no principle of patent law that the
scope of a surrender of subject matter during prosecution is limited to what is absolutely
necessary to avoid a prior art reference that was the basis for an examiner’s rejection.
To the contrary, it frequently happens that patentees surrender more through
amendment than may have been absolutely necessary to avoid particular prior art. In
such cases, we have held the patentees to the scope of what they ultimately claim, and
we have not allowed them to assert that claims should be interpreted as if they had
surrendered only what they had to. See, e.g., Fantasy Sports Props., Inc. v.
Sportsline.com, Inc., 287 F.3d 1108, 1114-15 (Fed. Cir. 2002) (patentee “cannot now be
heard to argue” a broad construction of the term “bonus points” because patentee
acquiesced in the examiner’s narrow interpretation to distinguish the claims from prior
art, even though under the broad construction the invention may have been patentably
distinct from the prior art); Elkay Mfg. Co., 192 F.3d at 979 (patentee relinquished a
construction of claim language that could include separate air and liquid feed tubes,
because patentee distinguished a prior art reference by arguing that the reference
taught the use of separate liquid and air feed tubes; court found it “irrelevant . . .
whether [patentee] had to relinquish an interpretation of the feed tube limitation that
could cover more than one flow path for liquid and air”). Here, in the course of
amending, the patentee expressly spoke to the meaning of the amended claim, noting
that it was limited to a single solute. We therefore agree with the district court that
Norian surrendered all sodium phosphate solutions made from more than a single
solute, i.e., a single type of sodium phosphate.
05-1172 10
Norian’s third argument is that by defining the solution of the asserted claims in
terms of the ingredients used to make the solution, rather than in terms of the ions
found in the solution after it was made, the court has improperly converted what was
meant to be a product claim into a product-by-process claim, without applying the legal
principles applicable to such claims. We disagree. All that the district court has done is
to conclude that the patentee characterized the solution in terms of the components put
into it, which the evidence before the court (including the specification) showed to be a
conventional means of describing a solution. Because the patentee chose to describe
the solution in that fashion, the claims remained product claims, but their scope was
limited to the designated ingredients from which the claimed solution was made.
Ultimately, Norian’s arguments distill to the basic contention that a person of skill
in the art would understand that any “sodium phosphate solution” will contain sodium
ions and phosphate ions, no matter whether it is made from one type or multiple types
of sodium phosphate. While that may be so, it does not change the clear effect of the
prosecution history, the specification, and the claim language. Rheox, Inc. v. Entact,
Inc., 276 F.3d 1319, 1320-21 (Fed. Cir. 2002) (holding that the term “calcium
orthophosphate,” as used in the claim and in light of the prosecution history, did not
cover monocalcium orthophosphate, even though a person of skill in the art would
recognize that the term generally refers to a family of compounds that includes
monocalcium orthophosphate). Norian did not simply claim a “sodium phosphate
solution”; nor did Norian broadly claim a solution containing sodium and phosphate ions.
Instead, Norian limited the solution in claim 8 to one using a single type of sodium
phosphate. Although Norian might have claimed the solution more broadly, it did not,
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and we are not now free to interpret the claim in a way that is at odds with the claim
language and other intrinsic evidence.
Finally, Norian argues that even if the district court was correct in its claim
construction and literal infringement was not established, the court still should not have
foreclosed its effort to prove infringement under the doctrine of equivalents. Norian,
however, amended the pertinent claim language in a way that, as the district court
construed it, disclaimed solutions made from multiple types of sodium phosphates. If
the district court was correct in that characterization of the prosecution history—and we
believe that it was—Norian is not entitled to prevail on a doctrine of equivalents theory.
Instead, under the doctrine of prosecution history estoppel, a narrowing of claim scope
during prosecution creates a presumption that the patentee has surrendered, for
purposes of the doctrine of equivalents, all subject matter falling between the scope of
the original claim and the scope of the claim as amended. See Festo Corp. v. Shoketsu
Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 741 (2002).
Norian does not suggest that this case falls within one of the exceptions to the
rule of prosecution history estoppel set forth by the Supreme Court in Festo. See Festo,
535 U.S. at 740-41. Instead, Norian’s argument is that Festo is inapplicable altogether
because Norian never surrendered the subject matter in dispute. As indicated above,
we have rejected Norian’s interpretation of the prosecution history, and we have
concluded, contrary to Norian’s argument, that the patentee disclaimed solutions made
from more than one form of sodium phosphate. As such, Festo is applicable to Norian’s
argument under the doctrine of equivalents, and in the absence of any suggestion of
why the principles of Festo do not bar Norian from recourse to that doctrine to establish
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infringement, we hold that Norian cannot avoid summary judgment of noninfringement
on that ground. Accordingly, we uphold the district court’s judgment in all respects.
AFFIRMED.
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