A Composition For Infringement

The Court of Appeals for the Federal Circuit ("CAFC") has a tough job . Simultaneously they want their decisions to be fair to everyone; fair for the patentee, fair for society, and fair to competitors. The essence of being fair is having a set of rules that everyone knows and which reward those who play by the rules and punish those who don't. If only it were that simple. What happens when a rule is arbitrary or when one rule conflicts with another? What happens to people who accidentally or innocently break a rule?

In a recent decision the CAFC seems to be favoring common sense over common legal practice . Norian Corporation owned two patents directed to the repair of bones or teeth with certain rapidly setting calcium phosphate compositions; the first patent covered the method of using the compositions while the second patent covered a "kit" that included both the wet and dry components needed to make the compositions. Stryker Corporation, which had been selling the dry components, along with directions describing how to obtain the wet components and how to prepare the compositions, started marketing a BoneSourceﾮ kit that included both wet and dry components, directions, AND a spatula for mixing them . Needless to say, Norian sued Stryker for infringement.

At the district court Norian lost badly. Not only was their patent on the composition invalidated but also the district court held that because the BoneSourceﾮ kit contained a spatula, and Norian's kit patent claims did not recite a spatula, the claims could not be infringed as a matter of law.

The district court held that the claim wording "consisting of" is a term of patent convention meaning that the claimed invention contains only what is expressly set forth in the claim and that nothing can be included in the kit beyond what is claimed, and therefore that Stryker's kit cannot infringe as a matter of law. This claim problem could have been avoided (perhaps) if the wording "comprising" had been used, or "the chemical composition of said kit consisting of".

On appeal it fell to the CAFC to perform the fine balancing act between being fair to the patentee (really, do we think adding a spatula avoids infringement), being fair to the competitor (if the rules say adding a spatula makes you non-infringing, then you act accordingly), and being fair to society (another rule is that words in a claim should generally have their plain and ordinary meaning - something everyone can understand).

In this case, the CAFC ruled that adding a spatula to the mix made a composition for infringement. They declared that although "consists of" is a term of patent art, limiting the invention to the list of items mentioned, one cannot avoid infringement by throwing extraneous items into the mix . To the CAFC, the "kit" of the invention "consists of" only the types of components listed in the claim. That is, the court concludes that the patentee drafted the claim to cover kits that include the enumerated chemical components, but no other chemical components. Adding a spatula, or the kitchen sink for that matter, doesn't affect infringement.