Saffran v. Johnson & Johnson

Means-plus-function descriptions are limited by clearly linked corresponding structure descriptions.

Opinion (Lourie): Bruce Saffran M.D., Ph.D. (“Saffran”) brought suit against Johnson & Johnson and Cordis Corp. (“JJ”), for infringement of his patent describing a unique method of fracture stabilization to restrain interfragmentary macromolecules held in place with staples or adhesive, or a stent to treat vascular injuries, fashioned from a minimally porous sheet as a means-plus-function limitation. The microporous nature of the sheet permits the concentration of naturally produced growth and repair hormones, and can be configured to deliver therapeutic agents to the injury site. These therapeutic agents are attached using hydrolysable bonds to control the release of the agents. A jury found JJ’s stent to be infringing, and awarded over $500,000,000 to Saffran. JJ appealed. The Court overturned the district court’s interpretation of Saffran’s device, because Saffran expressly relied on the description of his device as involving hydrolysable bonds to differentiate his patent from prior art open mesh stents, but argued that JJ’s stent infringes because it provides gradual release of therapeutic agents from a polymer coating. Further, Saffran’s description that therapeutic agents are release using a broad definition of “chemical bonds and linkages” does not enable the PHOSITA, and is limited by his use of “hydrolysable” when used clearly used to link or associate the corresponding structure in prosecution. A PHOSITA must be enabled to perform the claimed function, not asked to devise the means to do so. Accordingly, the Court REVERSED.