| Questioned
`|
`As of: December 8, 2015 7:35 PM EST
`
`B. Braun Med., Inc. v. Abbott Labs.
`
`United States Court of Appeals for the Federal Circuit
`
`September 8, 1997, Decided
`
`96-1508, 96-1525
`
`Reporter
`124 F.3d 1419; 1997 U.S. App. LEXIS 23563; 43 U.S.P.Q.2D (BNA) 1896
`
`B. BRAUN MEDICAL INC., Plaintiff-Appellant, v.
`ABBOTT LABORATORIES and NP MEDICAL, INC.,
`Defendants-Cross/Appellants.
`
`Prior History: [**1] Appealed from: U.S. District Court
`for the Eastern District of Pennsylvania. Judge Huyett,
`3rd.
`
`AFFIRMED-IN-PART,
`VACATED-IN-PART
`and
`
`Disposition:
`REVERSED-IN-PART,
`REMANDED.
`
`Core Terms
`
`patent, infringement, district court, valve, patent misuse,
`damages, declaratory judgment, traverse, equitable,
`patentee, restrain, issues, attorney's fees, valve seat,
`specification,
`triangular,
`recited, sideways,
`firmly,
`restrictions,
`flexible, equitable issues, crossbar,
`unenforceable,
`present
`case,
`corresponding,
`counterclaim, conditions, license, jury's
`
`Case Summary
`
`Procedural Posture
`
`the United States
`Plaintiff appealed a judgment of
`District Court for the Eastern District of Pennsylvania
`which found that plaintiff had misused a patent, that
`plaintiff was equitably estopped from asserting the
`patent, and that accused devices did not infringe the
`asserted claims of
`the patent. Defendant
`filed a
`cross-appeal for attorney fees and damages.
`
`Overview
`
`patent's asserted claims. Plaintiff appealed, and the
`defendant cross-appealed for damages and attorney
`fees. The court affirmed the judgment of no infringement,
`because the judgment was supported by substantial
`evidence. The court found that the judgment of patent
`misuse and equitable estoppel was not supported by
`the evidence, and it remanded to determine whether
`plaintiff's use restrictions exceeded the scope of the
`patent grant. The court determined that the lower court
`erred where it instructed jury to find plaintiff guilty of
`patent misuse if plaintiff placed any use restrictions on
`its sales of product. The lower court did not abuse its
`discretion in denying defendant's motion for a new trial
`or in denying defendant attorney fees.
`
`Outcome
`
`The court affirmed in part because substantial evidence
`supported the judgment of no infringement; it reversed
`in part, vacated in part, and remanded because the
`lower court erred in its treatment of equitable estoppel
`and patent misuse.
`
`LexisNexis® Headnotes
`
`Civil Procedure > Trials > Jury Trials > Right to Jury Trial
`
`HN1 See Fed. R. Civ. P. 39(b).
`
`Patent Law > Infringement Actions > Doctrine of
`Equivalents > General Overview
`
`Patent Law > Infringement Actions > Doctrine of
`Equivalents > Fact & Law Issues
`
`Patent Law > Jurisdiction & Review > Standards of
`Review > General Overview
`
`Plaintiff complained that defendant had infringed
`plaintiff's patent. The lower court found plaintiff misused
`the patent and was equitably estopped from asserting
`it. Moreover, defendant's devices did not infringe the
`
`HN2 Infringement (whether literal or under the doctrine
`of equivalents) is a question of fact, which the appellate
`court reviews for substantial evidence in the context of
`a jury trial.
`
`Edwards Exhibit 1040, pg. 1
`
`

`
`Page 2 of 11
`124 F.3d 1419, *1419; 1997 U.S. App. LEXIS 23563, **1; 43 U.S.P.Q.2D (BNA) 1896, ***1896
`
`Patent Law > ... > Claims > Claim Language > General
`Overview
`
`prejudiced if the patentee is now permitted to proceed
`with the infringement claim.
`
`Patent Law > Infringement Actions > Claim Interpretation >
`Means Plus Function Clauses
`
`HN3 35 U.S.C.S. § 112 mandates that a "means plus
`function" claim limitation be construed to cover the
`corresponding structure described in the specification
`and equivalents thereof.
`
`Antitrust & Trade Law > Regulated Practices > Intellectual
`Property > General Overview
`
`Antitrust & Trade Law > ... > Intellectual Property > Misuse
`of Rights > General Overview
`
`Antitrust & Trade Law > ... > Intellectual Property > Misuse
`of Rights > Patent Misuse Defense
`
`Patent Law > ... > Claims > Claim Language > General
`Overview
`
`Antitrust & Trade Law > ... > Intellectual Property >
`Ownership & Transfer of Rights > Assignments
`
`Patent Law > ... > Specifications > Description
`Requirement > General Overview
`
`Contracts Law > Contract Conditions & Provisions >
`General Overview
`
`Patent Law > Infringement Actions > Claim Interpretation >
`Means Plus Function Clauses
`
`Contracts Law > Types of Commercial Transactions > Sales
`of Goods > General Overview
`
`HN4 Structure disclosed in the specification is
`"corresponding" structure only if the specification or
`prosecution history clearly links or associates that
`structure to the function recited in the claim. This duty to
`link or associate structure to function is the quid pro quo
`for the convenience of employing 35 U.S.C.S. § 112.
`
`Patent Law > ... > Claims > Claim Language > General
`Overview
`
`Patent Law > ... > Specifications > Description
`Requirement > General Overview
`
`HN5 If one employs means-plus-function language in a
`claim, one must set forth in the specification an adequate
`disclosure showing what is meant by that language. If
`an applicant fails to set forth an adequate disclosure,
`the applicant has in effect failed to particularly point out
`and distinctly claim the invention as required by the
`second paragraph of 35 U.S.C.S. § 112.
`
`Patent Law > Infringement Actions > General Overview
`
`Patent Law > Infringement Actions > Burdens of Proof
`
`Patent Law > ... > Defenses > Estoppel & Laches > General
`Overview
`
`Patent Law > ... > Defenses > Estoppel & Laches >
`Elements
`
`Contracts Law > ... > Sales of Goods > Performance >
`General Overview
`
`Contracts Law > ... > Sales of Goods > Performance >
`Rights of Buyers
`
`Business & Corporate Compliance > ... > Defenses >
`Inequitable Conduct > Anticompetitive Conduct
`
`Patent Law > Ownership > Conveyances > General
`Overview
`
`Business & Corporate Compliance > ... > Ownership >
`Conveyances > Licenses
`
`HN7 An unconditional sale of a patented device
`exhausts the patentee's right to control the purchaser's
`use of the device thereafter. This exhaustion doctrine,
`however, does not apply to an expressly conditional
`sale or license.
`In such a transaction,
`it
`is more
`reasonable to infer that the parties negotiated a price
`that reflects only the value of the "use" rights conferred
`by the patentee. Such express conditions, however, are
`contractual in nature and are subject to antitrust, patent,
`contract, and any other applicable law, as well as
`equitable considerations such as patent misuse.
`Accordingly, conditions that violate some law or
`equitable consideration are unenforceable. On the other
`hand, violation of valid conditions entitles the patentee
`to a remedy for either patent infringement or breach of
`contract.
`
`HN6 Equitable estoppel, which bars a patentee from
`receiving relief, consists of
`three elements: (i) the
`patentee must communicate to the accused infringer
`(by words, conduct or silence) that the patentee will not
`pursue an infringement claim; (ii) the accused infringer
`must rely on that communication; and (iii) the accused
`infringer must establish that
`it would be materially
`
`Antitrust & Trade Law > Regulated Practices > Intellectual
`Property > General Overview
`
`Antitrust & Trade Law > ... > Intellectual Property > Misuse
`of Rights > General Overview
`
`Antitrust & Trade Law > ... > Intellectual Property > Misuse
`of Rights > Patent Misuse Defense
`
`Edwards Exhibit 1040, pg. 2
`
`

`
`Page 3 of 11
`124 F.3d 1419, *1419; 1997 U.S. App. LEXIS 23563, **1; 43 U.S.P.Q.2D (BNA) 1896, ***1896
`
`Civil Procedure > ... > Defenses, Demurrers & Objections >
`Affirmative Defenses > Unclean Hands
`
`Civil Procedure > ... > Attorney Fees & Expenses > Basis of
`Recovery > Statutory Awards
`
`Business & Corporate Compliance > ... > Defenses >
`Inequitable Conduct > Anticompetitive Conduct
`
`Patent Law > ... > Damages > Collateral Assessments >
`Attorney Fees
`
`HN12 35 U.S.C.S. § 285 provides that the court in
`exceptional cases may award reasonable attorney fees
`to the prevailing party. This statutory provision requires
`the moving party to demonstrate, by clear and
`convincing evidence, that the case is exceptional; even
`then, the district court retains discretion as to whether or
`not to award attorney fees.
`
`Counsel: William G. Todd, Hopgood, Calimafde, Kalil &
`Judlowe, L.L.P, of New York, New York, argued for
`plaintiff-appellant. With him on the brief were Porter F.
`Fleming and Richard E. Parke. Of counsel was Albert
`G. Bixler, Connolly Epstein Chicco Foxman Engelmyer
`& Ewing, of Philadelphia, Pennsylvania.
`
`Lee Carl Bromberg, Bromberg & Sunstein LLP, of
`Boston,
`Massachusetts,
`argued
`for
`defendants/cross-appellants. With him on the brief were
`Robert L. Kann, Timothy M. Murphy and Kerry L.
`Timbers. Of counsel was Judith R. S. Stern.
`
`Judges: Before MICHEL, PLAGER, and CLEVENGER,
`Circuit Judges.
`
`Opinion by: CLEVENGER
`
`Opinion
`
`[***1897]
`
`[*1421] CLEVENGER, Circuit Judge.
`
`B. Braun Medical, Inc. (Braun) appeals from the district
`court's judgment,
`following a jury trial,
`that Braun
`misused its patent, was equitably estopped from
`asserting its patent, and that, in any event, the accused
`devices did not infringe the asserted claims of Braun's
`patent. Abbott Laboratories (Abbott) cross-appeals,
`seeking attorney fees and damages for Braun's patent
`misuse. [**2] We conclude that the district court erred
`with respect to its treatment of equitable estoppel and
`patent misuse. Accordingly, we
`affirm-in-part,
`reverse-in-part, vacate-in-part, and remand for further
`proceedings.
`
`I T
`
`he patent in suit, U.S. Patent No. 4,683,916 (the '916
`patent), is generally directed to a reflux valve that
`
`Business & Corporate Compliance > ... > Infringement
`Actions > Defenses > Misuse
`
`HN8 The patent misuse doctrine, born from the
`equitable doctrine of unclean hands, is a method of
`limiting abuse of patent rights separate from the antitrust
`laws. The key inquiry under this fact-intensive doctrine
`is whether, by imposing the condition, the patentee has
`impermissibly broadened the physical or temporal scope
`of the patent grant with anticompetitive effect.
`
`Civil Procedure > ... > Justiciability > Case & Controversy
`Requirements > Actual Controversy
`
`Civil Procedure > Judgments > Declaratory Judgments >
`General Overview
`
`Civil Procedure > ... > Declaratory Judgments > Federal
`Declaratory Judgments > General Overview
`
`HN9 The Declaratory Judgment Act, 28 U.S.C.S. §
`2202, neither expands a court's jurisdiction nor creates
`new substantive rights. Instead, the Act is a procedural
`device that provides a new, noncoercive remedy (a
`declaratory judgment) in cases involving an actual
`controversy that has not reached the stage at which
`either party may seek a coercive remedy (such as an
`injunction or damages award) and in cases in which a
`party who could sue for coercive relief has not yet done
`so.
`
`Civil Procedure > Judgments > Declaratory Judgments >
`General Overview
`
`HN10 Once a court properly has jurisdiction to enter a
`declaratory judgment,
`it may also grant
`further
`necessary or proper relief based on a declaratory
`judgment after reasonable notice and hearing.
`
`Civil Procedure > Judgments > Declaratory Judgments >
`General Overview
`
`Civil Procedure > ... > Declaratory Judgments > Federal
`Declaratory Judgments > General Overview
`
`Civil Procedure > ... > Declaratory Judgments > Federal
`Declaratory Judgments > Discretionary Jurisdiction
`
`Patent Law > Remedies > General Overview
`
`HN11 28 U.S.C.S. § 2202 requires a hearing at which
`the declaratory judgment plaintiff must state its
`substantive claim for further relief.
`
`Edwards Exhibit 1040, pg. 3
`
`

`
`Page 4 of 11
`124 F.3d 1419, *1421; 1997 U.S. App. LEXIS 23563, **2; 43 U.S.P.Q.2D (BNA) 1896, ***1897
`
`attaches to an intravenous (IV) line and permits injection
`or aspiration of fluids by means of a needleless syringe.
`This type of valve provides safety benefits to health
`care professionals by reducing the risk of needlestick
`injuries, which might transmit blood-borne pathogens.
`Since 1987, Braun has sold an embodiment of the
`patented reflux valve under the commercial name
`SafSite (R) . The '916 patent contains drawings,
`reproduced below, that correspond to the SafSite (R)
`valve:
`
`[SEE ILLUSTRATION IN ORIGINAL]
`
`[*1422] As these drawings show, the valve is formed of
`a resilient disc 50 sandwiched between two body
`elements 11 and 25 that fit together. Body element 25
`includes a triangular member 40, which supports the
`center [***1898] of the resilient disc 50. Body element 11
`includes member 60, which, when engaged by a
`syringe, presses down on the resilient disc 50 to open
`the normally closed valve.
`
`in early 1991, Braun and Abbott
`Beginning [**3]
`representatives discussed the purchase by Abbott of
`the patented SafSite (R) valves. Braun informed Abbott
`that although it was willing to sell SafSite (R) valves to
`Abbott for use on Abbott's primary line and piggyback
`sets,
`it would not sell
`those valves for use on an
`extension set. 1 In a letter dated October 23, 1991,
`Randy Prozeller, Abbott's General Manager of Fluid
`Systems, agreed that his company would abide by
`these restrictions: "We will honor your company's
`demand that we not use the valve in question for list
`numbers other than our primary and primary piggyback
`sets." Pursuant to this arrangement, Abbott purchased
`approximately 536,000 SafSite (R) valves.
`
`[**4] Meanwhile, negotiations continued between
`Abbott and Braun for purchase of the SafSite (R) valves
`for use with Abbott's extension sets. Because the parties
`could not reach agreement on these terms, Abbott
`requested that NP Medical, Inc. (NP Medical) develop a
`substitute valve. After extensive development, NP
`Medical developed the accused product: the NP Medical
`Luer Activated Valve (LAV). The novel aspects of this
`new valve were claimed in U.S. Patent No. 5,190,067 to
`Paradis and Kotsifas.
`
`On July 20, 1993, Braun sued Abbott and NP Medical,
`alleging that the NP Medical LAV infringed claims 1 and
`2 of the '916 patent. The primary claim at issue in the
`present case recites (numbering added): 2
`
`1. A valve device comprising:
`
`[1] a first body element having an input opening
`therethrough;
`
`[2] a second body element which complements
`said first body element and having an outlet opening
`therefrom;
`
`[3] a resilient valve disc mountable between said
`first and second body elements;
`
`[4] first means with one body element for supporting
`the disc at the center thereof;
`
`[5] means with the other body element for holding
`said disc firmly against said first means [**5] in such
`a manner that said disc is restrained from sideways
`movement; and
`
`[6] means adjacent said valve disc for engagement
`by a syringe to open said normally closed disc to
`permit injection and aspiration of fluids through the
`device.
`
`The defendants denied infringement, challenged validity
`and asserted the equitable defenses of patent misuse,
`estoppel and implied license. Over Braun's objections,
`the district court submitted all
`issues,
`including
`interpretation of
`the claims in suit,
`to the jury.
`In
`November 1994, the jury determined that the '916 patent
`was not invalid and not infringed by the accused NP
`Medical LAV. The jury found no infringement because it
`construed the fifth element of the claims as requiring a
`traverse cross bar, or its equivalent, which it found
`lacking in the accused [**6] products. The jury also
`determined that Braun was estopped from charging the
`defendants with infringement, and that Braun had
`misused the '916 patent. Finally, the jury rejected the
`defendants' implied license defense.
`
`On the basis of the patent misuse finding, Abbott sought
`damages pursuant
`to its declaratory judgment
`
`1 The primary line and piggyback sets allow a needleless syringe to be attached directly to an IV. An extension set
`incorporating the SafSite (R) valve consists of a tube with a SafSite (R) valve on one end, and one or more connectors on the
`other end. These extension sets permit the delivery of additional fluids and drugs.
`
`2 Dependent claim 2 relates to, and limits, the subject matter of independent claim 1. Because the claim construction issue
`is identical for both claims, we will limit our discussion to claim 1 (as do the parties).
`
`Edwards Exhibit 1040, pg. 4
`
`

`
`Page 5 of 11
`124 F.3d 1419, *1422; 1997 U.S. App. LEXIS 23563, **6; 43 U.S.P.Q.2D (BNA) 1896, ***1898
`
`counterclaim. Following an additional eight-day trial on
`this issue, the jury decided that Braun's alleged patent
`misuse had not caused any damages to Abbott. After
`the district court entered judgment on all issues, Abbott
`filed a motion for attorney fees, contending that the
`case was exceptional. The district court denied this
`motion and explained that Braun had presented
`"sufficient [*1423] evidence and legal support to more
`than negate the possibility of bad faith or gross
`negligence on its part in bringing the infringement claim."
`Both parties appeal those portions of the district court's
`judgment that are adverse to them.
`
`II
`
`Before reaching the merits, we first address Braun's
`contentions that the district court erred by submitting all
`issues to the jury. Braun preserved this issue by
`objecting both during trial and in its post verdict motion
`for judgment as a matter [**7] of law. Upon submitting all
`issues to the jury over Braun's objections, the court
`indicated that if it were later determined that those
`issues were "for the court only, I will advise [sic, accept]
`the jury verdict as advisory."
`
`As to claim interpretation, we note that this case was
`submitted to the jury in 1994, [***1899] before this
`court's opinion in Markman v. Westview Instruments,
`Inc., 52 F.3d 967, 979, 34 U.S.P.Q.2D (BNA) 1321,
`1329 (Fed. Cir. 1995) (in banc), aff'd, 517 U.S. 370, 134
`L. Ed. 2d 577, 116 S. Ct. 1384, 38 U.S.P.Q.2D (BNA)
`1461 (1996), which held that claim interpretation is a
`question of
`law. Because we agree with the jury's
`interpretation in this case, any error that the district
`court may have committed is harmless.
`
`As to the issues of equitable estoppel and patent
`misuse, the district court submitted the issues to the jury
`based not on its authority to seek an advisory verdict
`under Fed. R. Civ. P. 39(c), but rather based on the
`authority provided by Fed. R. Civ. P. 39(b), which states:
`
`HN1 (b) By the Court. Issues not demanded for
`trial by jury as provided in Rule 38 shall be tried by
`the court; but, notwithstanding the failure of a party
`to demand a jury in an action in which such a
`demand might have [**8] been made of right, the
`court in its discretion upon motion may order a trial
`by a jury of any or all issues.
`
`To our knowledge, only a few courts have considered
`whether equitable issues may be tried to a jury over
`
`objection, pursuant to the authority provided in Rule
`39(b). These courts have concluded that
`the
`discretionary authority provided by the rule does not
`authorize jury trial of equitable issues. See, e.g., New
`Hampshire Fire Ins. Co. v. Perkins, 28 F.R.D. 588, 592
`(D. Del. 1961); Coates v. Union Oil Co., 176 F. Supp.
`713, 715 (D. Colo. 1959); see also 9 Charles Alan
`Wright, Arthur R. Miller, and Mary Kay Kane, Federal
`Practice and Procedure § 2334 (2d ed. 1983). On the
`other hand, with regard to at least certain equitable
`issues, our sister circuits are divided on whether such
`equitable issues may be tried to a jury based on authority
`separate from that of Rule 39(b). Compare Newhouse
`v. McCormick & Co., 110 F.3d 635, 641-43 (8th Cir.
`1997) (following rule of Second, Fourth, Seventh and
`Tenth Circuits barring jury trial of the equitable issue of
`front pay) with Cassino v. Reichhold Chem., Inc., 817
`F.2d 1338, 1347 (9th Cir. 1987) (following [**9] rule in
`Third, Fifth, Sixth and Ninth Circuits allowing jury to
`determine amount of front pay).
`
`The intricacies of Rule 39, and the question of whether
`a court may ever submit an equitable issue to the jury
`over objection, are not the focus of the briefing or
`argument in this case. We need not decide whether the
`submission of the equitable issues to the jury itself is
`reversible error, because, for the reasons set forth
`below, our rulings on both issues relieve Braun of any
`harmful consequences occasioned by the submission
`of those issues to the jury.
`
`III
`
`The first issue on appeal concerns the jury's verdict that
`the accused products do not infringe the '916 patent.
`The jury determined that "claim one claims only the
`traverse bar and equivalents thereof." Because the NP
`Medical LAV lacked a traverse bar or an equivalent
`thereof, the jury returned a verdict of no infringement
`either literally or under the doctrine of equivalents. On
`appeal, the focal point of Braun's argument is that the
`jury misinterpreted claim 1, and therefore that its verdict
`of no infringement must be overturned.
`
`HN2 Infringement (whether literal or under the doctrine
`of equivalents) is a question of fact,
`[**10] which we
`review for substantial evidence in the context of a jury
`trial. Young Dental Mfg. Co. v. Q3 Special Prods., 112
`F.3d 1137, 1141, 42 U.S.P.Q.2D (BNA) 1589, 1592
`(Fed. Cir. 1997). The jury's finding of no
`[*1424]
`infringement stems from its interpretation of the fifth
`limitation in claim 1, the only limitation in dispute. The
`
`Edwards Exhibit 1040, pg. 5
`
`

`
`Page 6 of 11
`124 F.3d 1419, *1424; 1997 U.S. App. LEXIS 23563, **10; 43 U.S.P.Q.2D (BNA) 1896, ***1899
`
`proper interpretation of that claim is a question of law,
`which we review de novo. See Markman, 52 F.3d at
`979, 34 U.S.P.Q.2D (BNA) at 1329.
`
`The fifth limitation recites "means with the other body
`element for holding said disc firmly against said first
`means in such a manner that said disc is restrained
`from sideways movement." Because this limitation is
`expressed in "means plus function" language and
`because it does not recite definite structure in support of
`its function, it is subject to the requirements of 35 U.S.C.
`§ 112, P 6 (1994). See Cole v. Kimberly-Clark Corp.,
`102 F.3d 524, 531, 41 U.S.P.Q.2D (BNA) 1001, 1006
`(Fed. Cir. 1996), petition for cert. filed, 65 U.S.L.W.
`3799 (U.S. May 19, 1997) (No. 96-1858); see also
`Greenberg v. Ethicon Endo-Surgery, Inc., 91 F.3d 1580,
`1584, 39 U.S.P.Q.2D (BNA) 1783, 1787 (Fed. Cir. 1996).
`HN3 That provision mandates that such a claim
`limitation [**11]
`"be construed to cover
`the
`corresponding structure .
`.
`. described in the
`specification and equivalents thereof." § 112, P 6.
`Accordingly, we must turn to the written description of
`the patent to find the structure that corresponds to the
`means recited in the fifth limitation. More specifically,
`we must search for the structure that holds the flexible
`disc 50 firmly against the triangular member 40 in a
`manner that restrains sideways movement.
`
`In examining the written description, we immediately
`find clear and unambiguous reference to such structure.
`Fig. 2 clearly shows a traverse cross bar 15 that holds
`the [***1900] disc against the triangular member 40.
`This reference is explicitly confirmed by text in the
`written description, which recites:
`
`Upon assembly, the lower surface of the traverse
`bar 15 of the upper (as shown) first body element
`firmly presses against the mid-portion of the flexible
`disc and presses same against the upper tip of
`triangular point 40. Preferably, the pressure is such
`that the triangular tip will form a small indentation
`140 (FIG. 3) within the disc. This indentation 140
`then will positively restrain the disc from sideways
`movement.
`
`Similarly, the [**12] summary of the invention explains
`that:
`
`pressure from a traverse bar mounted in the other
`body element. The pressure between the triangle
`point and the bar generally is sufficient so the
`flexible disc will be restrained against sideways
`movement.
`
`Therefore, the written description explicitly states that
`the traverse cross bar 15 is structure that is designed to
`hold the flexible disc firmly against
`the triangular
`member 40 so as to restrain sideways movement.
`
`In the face of this clear disclosure, Braun argues that
`although the written description indeed discloses the
`traverse cross bar as structure that holds the flexible
`disc against the triangular member, thereby restraining
`sideways movement, it also discloses an alternative
`structure for performing that function. Specifically, Braun
`contends that Fig. 3 of the specification shows a valve
`seat, and this valve seat functions to hold the flexible
`disc firmly against the triangular member. 3 We reject
`this argument.
`
`Section 112, paragraph 6 states that a
`[**13]
`means-plus-function claim "shall be construed to cover
`the corresponding structure .
`.
`. described in the
`specification."
`(emphasis added). We hold that,
`pursuant to this provision, HN4 structure disclosed in
`the specification is "corresponding" structure only if the
`specification or prosecution history clearly links or
`associates that structure to the function recited in the
`claim. This duty to link or associate structure to function
`is the quid pro quo for the convenience of employing §
`112, P 6. See O.I. Corp. v. Tekmar Co., 115 F.3d 1576,
`1583, 42 U.S.P.Q.2D (BNA) 1777, 1782 (Fed. Cir. 1997).
`Our holding in this regard is also supported by our
`precedent
`stating
`that
`claims
`drafted
`in
`means-plus-function format are subject
`to the
`definiteness requirement of the patent law:
`
`[*1425] HN5 If one employs means-plus-function
`language in a claim, one must set forth in the
`specification an adequate disclosure showing what
`is meant by that language. If an applicant fails to set
`forth an adequate disclosure, the applicant has in
`effect failed to particularly point out and distinctly
`claim the invention as required by the second
`paragraph of section 112.
`
`A pointed triangle with one body element supports
`the central area of the disc, which in turn is under
`
`In re Donaldson Co., 16 F.3d 1189, 1195, 29
`[**14]
`U.S.P.Q.2D (BNA) 1845, 1850 (Fed. Cir. 1994) (in banc);
`
`3 The valve seat is the portion of the body element against which the upper face of the flexible disc 51 rests when the valve
`is in its closed position.
`
`Edwards Exhibit 1040, pg. 6
`
`

`
`Page 7 of 11
`124 F.3d 1419, *1425; 1997 U.S. App. LEXIS 23563, **14; 43 U.S.P.Q.2D (BNA) 1896, ***1900
`
`see also In re Dossel, 115 F.3d 942, 946-47, 42
`U.S.P.Q.2D (BNA) 1881, 1884-85 (Fed. Cir. 1997); 35
`U.S.C. § 112, P 2.
`
`Although Fig. 3 of the patent shows a valve seat, neither
`the specification nor the prosecution history contains
`any indication that the valve seat structure corresponds
`to the recited function, i.e., that it holds the flexible disc
`against the triangular member so as to restrain sideways
`movement. This lack of association between the valve
`seat and the recited function is especially striking given
`the explicitly clear association provided between the
`traverse cross bar and the recited function. Because
`Braun's specification does not adequately disclose the
`valve seat as structure that holds the disc firmly in
`place, Braun has failed to particularly point out and
`distinctly claim that particular means. Cf. Athletic Alter-
`natives, Inc. v. Prince Mfg., Inc., 73 F.3d 1573, 1581, 37
`U.S.P.Q.2D (BNA) 1365, 1372 (Fed. Cir. 1996) (rejecting
`the patentee's broad interpretation of the claim because
`the patentee particularly pointed out and distinctly
`claimed only the narrower interpretation); [**15] Fonar
`Corp. v. General Elec. Co., 107 F.3d 1543, 1551-52, 41
`U.S.P.Q.2D (BNA) 1801, 1807 (Fed. Cir. 1997)
`(explaining that although the specification states that
`other wave forms may be used, it fails to specifically
`identify those wave forms and thus the § 112, P 6 claim
`is limited to the generic gradient wave form actually
`disclosed).
`In sum, Braun's specification does not
`describe the valve seat as a structure that holds the disc
`firmly in place in such manner that it is restrained from
`sideways movement. Therefore, we agree with the jury's
`determination that the means recited in the fifth limitation
`refers only to the traverse cross bar.
`
`there exists
`Based on this claim interpretation,
`substantial evidence to support the jury's verdicts of no
`infringement. The accused device lacks a traverse bar,
`and the jury could have determined that the valve
`[***1901] seat was not equivalent to the traverse bar -
`either literally under § 112, P 6 or under the doctrine of
`equivalents - based on testimony that it did not perform
`the claimed function and that it was not interchangeable
`with the traverse bar. See Pennwalt Corp. v. Durand-
`Wayland, Inc., 833 F.2d 931, 934, 4 U.S.P.Q.2D (BNA)
`1737, 1739 (Fed. Cir. 1987) [**16] (in banc) (explaining
`that an accused device must have an identity of claimed
`function to qualify as a § 112, P 6 equivalent).
`Accordingly, we affirm the district court's judgment on
`this issue.
`
`IV
`
`The second issue on appeal concerns the judgment
`that Braun was equitably estopped from suing Abbott
`and NP Medical for infringement. Braun contends that
`because this judgment is not supported by evidence,
`the district court erred by not granting its renewed
`motion for judgment as a matter of law on this issue. We
`agree.
`
`HN6 Equitable estoppel, which bars a patentee from
`receiving relief, consists of
`three elements: (i) the
`patentee must communicate to the accused infringer
`(by words, conduct or silence) that the patentee will not
`pursue an infringement claim; (ii) the accused infringer
`must rely on that communication; and (iii) the accused
`infringer must establish that
`it would be materially
`prejudiced if the patentee is now permitted to proceed
`with the infringement claim. See A.C. Aukerman Co. v.
`R.L. Chaides Const. Co., 960 F.2d 1020, 1041-1043, 22
`U.S.P.Q.2D (BNA) 1321, 1335-37 (Fed. Cir. 1992) (in
`banc).
`
`In the present case, there exists no evidence that Braun
`communicated anything [**17] to Abbott or NP Medical
`that would lead them to believe that Braun would not
`sue them for infringement if they made, used, or sold
`competing valves that infringed Braun's patent. Braun
`had no commercial dealings with NP Medical concerning
`needleless valves. Although Braun did have relations
`with Abbott, those relations concerned Braun's SafSite
`(R) valve and not the NP Medical LAV. Accordingly, the
`judgment of equitable estoppel
`is not supported by
`evidence.
`
`[*1426] V
`
`The jury also found Braun guilty of patent misuse based
`on the following instruction from the district court
`(emphasis added):
`
`[A] patent holder is not allowed to place restrictions
`on customers which prohibit resale of the patented
`product, or allow the customer to resell the patented
`product only in connection with certain products. . .
`. If you find, by a preponderance of the evidence,
`that Braun placed such restrictions on its customers,
`including Abbott, you must find that Braun is guilty
`of patent misuse.
`
`this jury instruction is legally
`Braun contends that
`erroneous because it essentially creates per se liability
`for any conditions that Braun placed on its sales. We
`agree.
`
`Edwards Exhibit 1040, pg. 7
`
`

`
`Page 8 of 11
`124 F.3d 1419, *1426; 1997 U.S. App. LEXIS 23563, **17; 43 U.S.P.Q.2D (BNA) 1896, ***1901
`
`this issue is governed by our
`The resolution of [**18]
`precedent in Mallinckrodt, Inc. v. Medipart, Inc., 976
`F.2d 700, 24 U.S.P.Q.2D (BNA) 1173 (Fed. Cir. 1992).
`In that case, we canvassed precedent concerning the
`legality of restrictions placed upon the post-sale use of
`patented goods. As a general matter, we explained that
`HN7 an unconditional sale of a patented device
`exhausts the patentee's right to control the purchaser's
`the device thereafter. 976 F.2d at 706, 24
`use of
`U.S.P.Q.2D (BNA) at 1178. The theory behind this rule
`is that in such a transaction, the patentee has bargained
`for, and received, an amount equal to the full value of
`the goods. See Adams v. Burke, 84 U.S. (17 Wall.) 453,
`456-57, 21 L. Ed. 700 (1874); Keeler v. Standard Fold-
`ing Bed Co., 157 U.S. 659, 663, 39 L. Ed. 848, 15 S. Ct.
`738 (1895). This exhaustion doctrine, however, does
`not apply to an expressly conditional sale or license. In
`such a transaction, it is more reasonable to infer that the
`parties negotiated a price that reflects only the value of
`the "use" rights conferred by the patentee. As a result,
`express conditions accompanying the sale or license of
`a patented product are generally upheld. See Mallinck-
`rodt, 976 F.2d at 708, 24 U.S.P.Q.2D (BNA) at 1177,
`1179; cf. General Talking [**19] Pictures Corp. v.
`Western Elec. Co., 305 U.S. 124, 127, 39 U.S.P.Q. 329,
`330, 83 L. Ed. 81, 59 S. Ct. 116 (1938) ("That a restrictive
`license is legal seems clear."). Such express conditions,
`however, are contractual in nature and are subject to
`antitrust, patent, contract, and any other applicable law,
`as well as equitable considerations such as patent
`misuse. Mallinckrodt, 976 F.2d at 703, 24 U.S.P.Q.2D
`(BNA) at 1176. Accordingly, conditions that violat