Interchangeable use of specification terms clearly redefined claim limitation; CAFC finds
Interchangeable use of specification terms clearly redefined claim limitation; CAFC finds
The district court ruled that Aortic acted as its own lexicographer and redefined “outer frame” to mean “self-expanding frame.”
A precedential ruling has been issued by the U.S. Court of Appeals for the Federal Circuit (CAFC) in Aortic Innovations LLC v. Edwards Lifesciences Corp. affirming most of a non-infringement ruling entered by the District of Delaware over accused transcatheter heart valve products with balloon-expandable frames. About challenges to the district court’s claim construction raised by Aortic, the Federal Circuit determined that the patentee acted as its own lexicographer for the claim term “outer frame” through consistent interchangeable uses of that term made in connection with specific embodiments disclosed in the specification.
Edwards Lifesciences was sued by Aortic which asserted four patents claiming transcatheter valve devices and methods for repairing diseased aortic valves: U.S. Patent No. 10881538; U.S. Patent No. 10966846; U.S. Patent No. 10987236; and U.S. Patent No. 1129735. Transcatheter valves having a frame component including a balloon-expendable frame secured to a self-expanding frame is the specification common to these patents. Serial-frame embodiments in which the balloon-expandable and self-expanding frames attach to form a single frame, and dual-frame embodiments involving inner and outer frames are further disclosed by the common specification.
The parties disputed the meaning of the claim term “outer frame” from representative claim 1 of the ‘735 patent in the district court. The district court found that claim term to be used interchangeably throughout the specification with “self-expanding frames” and “self-expanding outer frames” and ruled that Aortic acted as its own lexicographer and redefined “outer frame” to mean “self-expanding frame”. After claim construction, Aortic stipulated to non-infringement as the accused SAPIEN 3 Ultra valve marketed by Edwards Lifesciences does not include a self-expanding frame.
On appeal, as a threshold matter, the Federal Circuit ruled that it lacked subject matter jurisdiction to hear Aortic’s appeal as to the ‘538 patent, which had been cancelled by the U.S. Patent and Trademark Office in December 2023.
The Federal Circuit assessed the claim construction issues present on appeal and affirmed the district court’s finding that Aortic acted as its own lexicographer in defining the term “outer frame.” While a patent’s specification may define claim terms by implication, part of the holding from the CAFC’s 2001 ruling in Bell Atlantic Network Services versus Covad Communications, other Federal Circuit case law including Thorner versus Sony Computer Entertainment America (2012) makes it clear that such implied redefinition must be so clear that it equates to an explicit one and not simply a reference to an alternative embodiment.
The appellate court in Aortic’s appeal noted that structures in the dual-frame embodiment disclosed by patent diagrams were interchangeably labelled as “outer frame” and “self-expanding frame,” a connection consistently repeated throughout the patents’ specification.
The CAFC reportedly concluded: “Given that the district court construed claim 1’s ‘inner frame’ to be balloon-expandable, a construction no party disputes on appeal, then claim 1’s ‘outer frame’ must be self-expanding.”
The conclusion was supported by the dual-frame embodiments in light of the specification not clarifying that the self-expanding nature of the structure is not present in every embodiment of the claimed invention.
Aortic on the other hand argued that Edwards Lifesciences should be judicially estopped from arguing any construction other than the plain and ordinary meaning of “outer frame,” which is the construction that Edwards relied upon in inter partes review (IPR) proceedings at the Patent Trial and Appeal Board (PTAB). However, the Federal Circuit agreed with Edwards that Aortic lost this argument by failing to raise it at the district court. Although Aortic raised the inconsistent positions in responsive briefing on claim construction, that argument wasn’t further developed in briefing or at the claim construction hearing, where Aortic’s counsel argued the propriety of taking different positions in alternative forum without citing case law supporting estoppel.
The Federal Circuit found all remaining arguments unpersuasive and affirmed the Delaware district court’s ruling in part and awarded costs to Edwards Lifesciences.
