Issue 179 | April 2, 2004
Nomos Corporation v.
BrainLab USA, Inc. and BrainLab, Inc.

In Nomos Corporation v. BrainLab USA, Inc. and BrainLab, Inc., No. 03-1364 (Fed. Cir. February 4, 2004), the Federal Circuit affirmed the judgment of noninfringement of Nomos' '026 patent, relating to the positioning of a patient during radiation treatment so as to maximize the dose to the lesion while minimizing the exposure of surrounding tissue.

At issue was the construction of a single limitation in means-plus-function claim 1 of Nomos' patent, reciting "a means for generating at least one ultrasound image of the lesion in the patient's body." BrainLAB argued that its accused ExacTrac device used a handheld ultrasound probe, while the means for generating the ultrasound image in the '026 patent must be affixed to the treatment table so that its orientation is maintained with respect to the axis of the treatment table. After a Markman hearing, the district court construed the corresponding structure of limitation (a) of claim 1 as a "fixed ultrasound probe and a bracket or fixation device that maintains the ultrasound probe perpendicular to the treatment table and constrains it to rotate or move along the axis of the table in order to generate an ultrasonic image, and equivalent structures."

On appeal, the parties agreed as to the function recited in claim 1 but disagreed with respect to the determination of corresponding structure. Agreeing with the district court, the federal circuit reviewed the only embodiment described in the specification and stated:

This language indicates that the invention envisioned and claimed by the applicant included a fixation device that secures the probe to the treatment table. This is the only embodiment of the invention described in the '026 patent. As a result, the corresponding structure is limited to that embodiment, which includes a fixation device, and its equivalents.

The federal circuit rejected Nomos' arguments to the contrary, stating that the interpretation of corresponding structure comes from the written description, not from a dependent claim, and that the "prohibition against reading limitations from a dependent claim into the independent claim [was] not violated." Second, claim differentiation, said to be a guide rather than a rigid rule, did not override the requirements of § 112, ¶ 6 when the "claim will bear only one interpretation."

Finally, the court affirmed the holding of noninfringement based on the lack of equivalent structure found in the ExacTrac device, combined with the fact that the ExacTrac device predated the '026 patent in suit.

To view the full decision visit http://www.aplf.org/mailer/Issue179.doc

To discuss this topic further, please feel free to contact the author Michael R. Dzwonczyk, (mdzwonczyk@sughrue.com), at Sughrue Mion, PLLC in Washington DC., USA.

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