NY Patent Decisions Blog

Judge Schofield Rules Claims that “Comprise” Elements “Consisting Of” Other Elements Are “Closed-Ended”

On June 4, 2019, Judge Lorna G. Schofield (S.D.N.Y.) ruled on claim construction disputes in an action brought by Plaintiff EMED Technologies Corporation (“EMED”) against Defendant Repro-Med. Systems, Inc. (“RMS”). EMED alleged infringement by RMS of U.S. Patent No. 9,808,576 (“the ’576 patent”), which relates to a medical device for the treatment of Primary Immunodeficiency Disease.

The parties disputed five claim terms: the Court adopted RMS’s construction for one term, EMED’s construction for two terms, and found that two terms did not require construction. With respect to the first term, the claim is directed to a protective “device…comprising … a mechanical fastener … consisting of….” EMED argued that the term “consisting of” used in this context “does not limit the components of the device to the disclosed elements.” However, RMS countered that “consisting of” is traditionally a “closed-ended exclusive term.” The Court agreed with RMS. The Court found that “consisting of” means that the claimed invention contains “only what is expressly set forth in the claim” and excludes other elements.  This is so even when “consisting of” is used in the body of a claim that uses “comprising” in its preamble.

RMS also argued that the term “winged medical needle” was indefinite.  However, the Court disagreed. The Court found that “the written description, combined with the intrinsic and extrinsic evidence, are sufficient to inform a person of ordinary skill in the art to understand” the meaning of “winged medical needle.” The Court also adopted EMED’s construction for “winged medical needle located in the central body portion.” Consistent with the specification, the Court construed the term as “a medical needle with two attached bilateral wings extending from the central body portion”.  The Court rejected RMS's argument that the proposed construction would introduce uncertainty as to the meaning of “extending from the central body portion.”

Finally, the Court determined that no construction was required for the terms “winged medical needle having a first end in fluid connection with a delivery tube” and “winged medical needle is substantially perpendicular to the delivery tube.” The Court noted that the patentee is entitled to the full scope of the claim language, and the narrowed scope proffered by RMS was rejected.

Case: EMED Tech. Corp. v. Repro-Med. Sys., Inc., No. 18 Civ. 5880 (LGS) (S.D.N.Y. June 4, 2019)