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There is a fine line between construing the claims in light of a specification and improperly importing a limitation from the specification into the claims. In reviewing the intrinsic record to construe the claims, a court must strive to capture the scope of the actual invention, rather than strictly limit the scope of claims to disclosed embodiments, or allow the claim language to become divorced from what the specification conveys is the invention.
The patents for retractable syringes disclosed a "bridge" embodiment, in which the head of the needle holder contained two parts, an inner head and a retainer member that surrounded the inner head. After trial, Becton, Dickinson and Company (“BD”) moved for judgment as a matter of law (JMOL) of non-infringement and invalidity, which the court denied. A jury subsequently found infringement of multiple claims of the asserted patents and that none of the asserted claims were invalid.
Did the district court err when it concluded that the claimed "body" of the syringe was not limited to a one-piece structure?
The appellate court agreed with BD that the claimed "body" was limited to a one-piece structure in light of the specifications. While the patents contained an independent claim that recited a "body," '224 Patent, claim 25, with a dependent claim that limited the "body" to a "one-piece body," '224 Patent, claim 31, none of the claims expressly recited a body that contained multiple pieces. Thus, while the claims can be read to imply that a "body" was not limited to a one-piece structure, that implication was not a strong one. The specifications indicated that the claimed "body" refers to a one-piece body. In distinguishing prior art syringes comprised of multiple pieces, the specifications stated that the prior art had failed to recognize a retractable syringe that "can be molded as one piece outer body." Consistent with this characterization of the prior art, the Summary of the Invention stated that "[t]he invention is a retractable tamperproof syringe," and that this syringe "features a one piece hollow body." Similarly, the specifications, in describing the invention, expressly stated that each syringe embodiment contains a one-piece body. In addition, each figure that depicted a syringe body showed a one-piece body. In contrast, the specifications did not disclose a body that consisted of multiple pieces or indicated that the body is anything other than a one-piece body. In this case, while the claims left open the possibility that the recited "body" may encompass a syringe body composed of more than one piece, the specifications tell us otherwise. They expressly recite that "the invention" has a body constructed as a single structure, expressly distinguish the invention from the prior art based on this feature, and only disclose embodiments that are expressly limited to having a body that is a single piece. Thus, a construction of "body" that limited the term to a one-piece body was required to tether the claims to what the specifications indicate the inventor actually invented. Accordingly, the district court erred when it construed "body" as encompassing bodies composed of multiple pieces.