        NOTE: This disposition is nonprecedential.

  United States Court of Appeals
      for the Federal Circuit
               __________________________

                    MARCTEC, LLC,
                    Plaintiff-Appellant,

                             v.
        JOHNSON & JOHNSON AND CORDIS
               CORPORATION,
              Defendants-Appellees.
               __________________________

                       2009-1457
               __________________________

   Appeal from the United States District Court for the
Southern District of Illinois in Case No. 07-CV-825, Chief
Judge David R. Herndon.
             ___________________________

                 Decided: August 4, 2010
               ___________________________

    GARRET A. LEACH, Kirkland & Ellis LLP, of Chicago, Il-
linois, argued for plaintiff-appellant. With him on the brief
were ROBERT G. KRUPKA and CHRISTOPHER R. LIRO.

   GREGORY L. DISKANT, Patterson Belknap Webb & Tyler
LLP, of New York, New York, argued for defendants-
appellees. With him on the brief were EUGENE M.
MARCTEC   v. JOHNSON & JOHNSON                            2


GELERNTER, IRENA ROYZMAN and CHARLES D. HOFFMANN.
Of counsel on the brief was MICHAEL J. TIMMONS, Johnson &
Johnson, of New Brunswick, New Jersey.
                __________________________

       Before NEWMAN, DYK, AND PROST, Circuit Judges.
NEWMAN, Circuit Judge.

     MarcTec, LLC appeals the summary judgment of the
United States District Court for the Southern District of
Illinois, holding that U.S. Patents 7,128,753 (“the ’753
patent”) and 7,217,290 (“the ’290 patent”) are not infringed
by the Cypher® stent of Johnson & Johnson and Cordis
Corporation. The decision turned on the district court’s
construction of the term “bonded” in the asserted claims of
both patents. We affirm this aspect of the district court’s
claim construction, and the judgment of non-infringement
based on that construction. 1

                        DISCUSSION

     The ’753 and ’290 patents have identical specifications
and are directed to a surgical implant in which a polymeric
material is bonded by heat to an expandable implant, where
the polymer includes a therapeutic agent such as an antibi-
otic. Claim 1 is the broadest claim of the ’753 patent:

   1. A surgical device for implantation in a body com-
   prising: an implant, at least a portion of which is
   expandable; and a polymeric material bonded to the
   implant, wherein the polymeric material is a ther-
   moplastic, includes a therapeutic agent, is non-
   1
        MarcTec, LLC v. Johnson & Johnson, 638 F. Supp.
2d 987 (S.D. Ill. 2009) (summary judgment order); MarcTec,
LLC v. Johnson & Johnson, No. 07-cv-825-DRH, 2009 WL
910200 (S.D. Ill. Mar. 31, 2009) (claim construction order).
3                            MARCTEC   v. JOHNSON & JOHNSON


    flowable and non-adherent at room temperature,
    and becomes flowable, tacky, and adherent upon the
    application of heat.

For the ’290 patent, claim 1 is the broadest claim:

    1. An implant for implantation in a human body
    comprising: a tubular member having a channel and
    mechanically expandable upon activation of a deliv-
    ery mechanism from a contracted condition in which
    the tubular member has a first cross sectional size
    in a plane perpendicular to a longitudinal central
    axis of the tubular member to an expanded condi-
    tion in which at least a portion of the tubular mem-
    ber has a second cross sectional size in a plane
    perpendicular to the longitudinal central axis of the
    tubular member, the second cross sectional size be-
    ing larger than the first cross sectional size to
    thereby lock the tubular member against tissue in
    the human body; and a first component bonded to at
    least a portion of the tubular member and formed of
    a heat bondable material that includes a therapeu-
    tic agent selected from the group consisting of a tis-
    sue ingrowth promoter and an antibiotic, wherein
    the heat bondable material is non-flowable and non-
    adherent at room temperature and becomes flow-
    able, tacky, and adherent upon the application of
    heat.

(Emphases added.) The claims of both patents all include
the requirement of a polymeric material or heat bondable
material bonded to an implant. Relying on the specification
and the Applicants’ arguments during prosecution, the
district court construed “bonded” to mean “bonded by the
application of heat.”
MARCTEC   v. JOHNSON & JOHNSON                               4


    The accused product is a drug-eluting stent having the
brand name Cypher®, for implantation into patients with
narrowed or blocked coronary arteries. This stent consists
of an expandable, slotted metal tube that is bonded to a
matrix comprised of two polymers, poly n-butyl methacry-
late (PBMA) and polyethylene-co-vinyl acetate (PEVA), and
a drug having the common name sirolimus, also known as
rapamycin. During a portion of the manufacturing process
called “solution casting,” the polymers and the drug are
dissolved in a volatile solvent and the resulting solution is
sprayed onto the stents. The stents are then air-dried,
allowing the solvent to evaporate and leaving the poly-
mer/drug coating “bonded” to the stents. The solution
casting process is performed at room temperature; no heat
is applied. This is the basis for the judgment of non-
infringement, for the district court construed the claims as
requiring the application of heat. The district court ex-
plained:

    Heat bonding is the only form of bonding taught by
    the patent[s]. The specification defines “bondable
    material” as “any material, suitable for use in surgi-
    cal applications, which can be softened and made
    flowable by the application of heat, and which, when
    softened, will become tacky and bond to other mate-
    rials and will flow to fill available space.”

MarcTec, 2009 WL 910200, at *11 (emphasis omitted).

    MarcTec argues that the asserted claims do not require
the use of heat, and that the doctrine of claim differentiation
undermines the district court’s construction, for dependent
claim 8 of the ’753 patent specifically describes the poly-
meric material as one that “is bonded to the implant by the
application of heat.” MarcTec observes that the district
court’s construction of “bonded” renders this claim superflu-
5                              MARCTEC   v. JOHNSON & JOHNSON


ous. Perhaps it does. However, as stated in Multiform
Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473, 1480 (Fed.
Cir. 1998), “the doctrine of claim differentiation can not
broaden claims beyond their correct scope, determined in
light of the specification and the prosecution history and
any relevant extrinsic evidence.”

     The specification’s discussion of bonding, in the context
of the invention, is uniformly directed to heat bonding. The
“Summary of the Invention” states that the components of
the inventive assembly “are bond[ed] to each other by the
application of heat.” ’753 patent, col.1 ll.66-67, col.2 ll.4, 8,
15. During prosecution of the patents, the Applicants
limited the claimed “bonding” to heat bonding, in order to
overcome the cited U.S. Patent 5,102,417 to Palmaz by
arguing that: “In contrast [to Palmaz], Applicants’ implant
includes a heat bondable material which is bonded to an
implant by the application of heat.” [J.A. 5739.] To over-
come the rejection based on Palmaz, and “[t]o highlight this
distinction,” the Applicants amended the claims to recite “a
polymer material which is non-flowable and non-adherent
at room temperature and becomes flowable, tacky, and
adherent upon the application of heat.” [J.A. 5739] Marc-
Tec argues that the distinction from the Palmaz reference
was not premised on the use of heat. MarcTec states that
the distinction was between “bonding” the material to an
implant, as in Applicants’ invention, and having the mate-
rial “placed upon” the implant, as in Palmaz. MarcTec
states that the Applicants had no need to, and did not,
distinguish Palmaz based on heat bonding because Palmaz
lacks any teaching of bonding. The district court found that
the prosecution record shows heat bonding as a condition of
patentability, and not merely a preferred method of bond-
ing. See Honeywell Int’l, Inc. v. ITT Industries, Inc., 452
F.3d 1312, 1318 (Fed. Cir. 2006) (when a patentee consis-
MARCTEC   v. JOHNSON & JOHNSON                             6


tently describes a particular embodiment as his invention,
“[t]he public is entitled to take the patentee at his word”).

     Limitations clearly adopted by the applicant during
prosecution are not subject to negation during litigation, on
the argument that the limitations were not really needed in
order to overcome the reference. When an applicant yields
claim scope in order to secure allowance of the patent, the
public notice aspect of the record inhibits later retrench-
ment to recover what was yielded. See Norian Corp. v.
Stryker Corp., 432 F.3d 1356, 1361-62 (Fed. Cir. 2005) (“[I]t
frequently happens that patentees surrender more through
amendment than may have been absolutely necessary to
avoid particular prior art. In such cases, we have held the
patentees to the scope of what they ultimately claim, and we
have not allowed them to assert that claims should be
interpreted as if they had surrendered only what they had
to.”). Prosecution history estoppel thus prevents MarcTec
from recovering claim scope that includes bonding without
the application of heat.

    We affirm the district court’s construction that “bonded”
means bonded by the application of heat. Although MarcTec
argues that heat is applied, it did not present evidence to
avoid the grant of summary judgment. The district court’s
determination that no reasonable jury could find infringe-
ment, is affirmed.

                       AFFIRMED
