                       NOTE: This disposition is nonprecedential.

 United States Court of Appeals for the Federal Circuit
                                        2008-1416


                  APPLIED MEDICAL RESOURCES CORPORATION,

                                                        Plaintiff-Appellant,

                                            v.


                     UNITED STATES SURGICAL CORPORATION
                        and TYCO HEALTHCARE GROUP, LP,

                                                        Defendants-Appellees.


       Joseph R. Re, Knobbe, Martens, Olson & Bear, LLP, of Irvine, California, argued
for plaintiff-appellant. With him on the brief were Joseph F. Jennings and Lauren K.
Katzenellenbogen, of Irvine, California, and Karen Vogel Weil and Brian C. Horne, of
Los Angeles, California.

      Fred H. Bartlit, Jr., Bartlit Beck Herman Palenchar & Scott LLP, of Denver,
Colorado, argued for defendants-appellees. With him on the brief were Glen E.
Summers and Sean C. Grimsley. Of counsel on the brief was Donald L. Morrow, Paul
Hastings Janofsky & Walker LLP, of Costa Mesa, California.

Appealed from: United States District Court for the Central District of California

Judge Cormac J. Carney
                       NOTE: This disposition is nonprecedential.

 United States Court of Appeals for the Federal Circuit
                                        2008-1416

                  APPLIED MEDICAL RESOURCES CORPORATION,

                                                  Plaintiff-Appellant,

                                             v.

                     UNITED STATES SURGICAL CORPORATION
                        and TYCO HEALTHCARE GROUP, LP,

                                                  Defendants-Appellees.

Appeal from the United States District Court for the Central District of California in case
no. 03-CV-01267, Judge Cormac J. Carney.

                            __________________________

                            DECIDED: February 24, 2009
                            __________________________


Before MAYER, GAJARSA, and PROST, Circuit Judges.

PROST, Circuit Judge.

       Applied Medical Resources Corporation (“Applied”) appeals the April 29, 2008

decision of the United States District Court for the Central District of California denying

its motion for a new trial. For the reasons set forth below, we affirm.

                                    I. BACKGROUND

                                 A. The Asserted Patent

       In 2003, Applied brought suit against United States Surgical Corporation and

Tyco Healthcare Group (collectively, “U.S. Surgical”) alleging infringement of claim 18 of

United States Patent No. 5,385,553 (“the ’553 patent”).
        The invention disclosed in the ’553 patent was described in a prior appeal in this

case:

        The ’553 patent is entitled “Trocar With Floating Septum Seal.” As the
        patent explains, a trocar provides a channel through the abdominal cavity
        through which instruments can be inserted during laparoscopic surgery.
        During these procedures, the surgeon inflates the abdomen with an
        insufflation gas in order to maintain the abdomen in a distended state. To
        prevent the gas from leaking out when an instrument is inserted, trocars
        are equipped with a valve which forms a seal around the inserted
        instrument. The valves include an orifice through which the instrument is
        inserted that allows for a variable diameter seal to be made with the
        instrument. Two problems can arise with the valves which result in
        undesirable leaking of the insufflation gas. First, during insertion, the
        sharp point of the instrument may cause cupping or tearing of the seal.
        Second, after insertion, if the instrument is operated off-axis, it may pull
        the orifice into a “cat-eye” shape, such that the degraded seal around the
        instrument permits gas to escape. ’553 patent, col. 1, ll. 15-52.

        The ’553 patent discloses a floating seal to provide for the orifice to move
        to an off-axis position without deforming. Id. at col. 2, ll. 6-13. The inner
        portions of the floating seal, which define the orifice, move substantially
        intact so that the orifice can maintain a circular configuration around the
        instrument. Id.

Applied Med. Res. Corp. v. U.S. Surgical Corp., 448 F.3d 1324, 1327 (Fed. Cir. 2006)

(“Applied II”).

        Claim 18 of the ’553 patent, the only claim at issue in this appeal, recites:

        [a] An access device adapted to form an access channel across a body
        wall, and configured to receive a surgical instrument in the access
        channel, the access device comprising:

        [b] a cannula having an axis extending between a proximal end and a
        distal end of the device;

        [c] a seal housing disposed at the proximal end of the cannula and forming
        with the cannula the access channel of the device;

        [d] a flexible valve disposed relative to the housing and across the access
        channel, the valve having elastomeric properties for forming a seal with
        the instrument when the instrument is disposed in the access channel;




2008-1416                                     2
      [e] portions of the valve defining the orifice which is sized and configured
      to receive the instrument and to form the seal with an outer surface of the
      instrument; and

      [f] means disposed circumferentially outwardly of the valve portions for
      supporting the valve portions within the seal housing, the supporting
      means being movable relative to the housing to permit the valve portions
      to float relative to the axis of the cannula.

      The parties agree that element [f] is a means-plus-function limitation that is

governed by 35 U.S.C. § 112, ¶ 6. The parties also agree that, with respect to this

appeal, the only relevant structure corresponding to element [f] is disclosed in Figures 6

and 7 of the ’553 patent.




      These figures disclose an embodiment of the claimed trocar both with (Figure 7)

and without (Figure 6) an instrument 26 inserted through orifice 38. The parties refer to

this structure as the “ring-levers-teeth” embodiment. In this embodiment, the septum



2008-1416                                   3
valve 36 is connected to the levers 54 via the tooth members 62. ’553 patent, col.10

ll.41-63. At the end opposite the tooth members 62, the levers 54 are connected to a

floating ring (pictured but not numbered) that has a diameter less than that of the

annular recess in which it sits (pictured but not numbered). Id. at col.10 ll.36-40. When

an off-axis force is applied to the instrument, the ring can move freely within the annular

recess, carrying with it the levers 54 and tooth members 62. Id. at col.10 ll.41-46. In

this embodiment, the inner portions 37 of the septum valve 36, which are supported by

the tooth members 62, are isolated from the off-axis forces and will not deform. Id. at

col.10 ll.49-52. Because the inner portions 37 of the valve do not deform, the seal with

the instrument 26 will be maintained and insufflation gas will not be able to escape. The

outer portions 39 of the septum valve 36, however, will stretch and compress to

accommodate the movement of the ring, levers, and teeth. Id. at col.10 ll.46-49.

                                B. The Accused Product

       Applied alleges that U.S. Surgical’s trocar, the VersaPort Plus, infringes claim 18

of the ’553 patent. As shown below, the VersaPort Plus comprises a hemispherical

plastic structure known as the “gimbal” and a valve (referred to as the “blue valve”).

The blue valve is sandwiched inside part of the gimbal.         When off-axis forces are

applied to an instrument that is inserted through the trocar, the forces are transmitted

through the valve to the gimbal. In response to those forces, the gimbal moves into the

annular recess. The blue valve is made of a stiff material that will not deform when the

off-axis forces from the instrument are applied to it. The VersaPort Plus thus solves the

same problem as the ring-levers-teeth embodiment of the ’553 patent—it prevents off-




2008-1416                                   4
axis forces from deforming the seal between the valve and the instrument and allowing

insufflation gas to escape.




                                 C. Procedural History

       Applied first sued U.S. Surgical for infringement of the ’553 patent in 1996. While

that suit involved a different accused product and has long since been resolved, the

district court in that case construed element [f], the means-plus-function limitation in

claim 18, and the parties agree that they are bound by that construction. In that case,

the district court identified the following structure in the rings-levers-teeth embodiment

shown in Figures 6 and 7 as corresponding to the “supporting” and “permitting-to-float”

functions of element [f]: “a ring that is capable of moving side to side because it has a

diameter less than that of the recess that holds it, and that is connected to levers with

teeth that are in turn attached to the septum valve.” Applied II, 448 F.3d at 1330.




2008-1416                                   5
Importantly, this construction does not specifically include the outer portions 39 of the

septum valve 36.

       The infringement suit that gave rise to this appeal began in 2003 when U.S.

Surgical introduced the VersaPort Plus trocar. In March 2005, the district court granted

U.S. Surgical’s motion for summary judgment that the VersaPort Plus did not infringe

claim 18. Because Applied conceded that the VersaPort Plus did not contain the exact

ring-levers-teeth structure disclosed in the ’553 patent, the only disputed issue was

whether the VersaPort Plus contained an equivalent structure that satisfied element [f].

Applied Med. Res. Corp. v. U.S. Surgical Corp., No. SACV 03-1267CJC, 2005 WL

4122737, at *7 (C.D. Cal. Mar. 7, 2005) (“Applied I”). The district court concluded that

“U.S. Surgical’s gimbal and Applied’s ring-levers-teeth structure are two very different

structures that perform their ‘supporting’ and ‘float’ functions for a trocar seal in very

different ways.” Id. at *7. Specifically, the district court focused on the ring-levers-teeth

embodiment’s use of distinct inner and outer valve portions, as described by the

specification and Applied’s expert, Dr. Sheehan. Id. In the district court’s view, U.S

Surgical’s use of a rotating gimbal with a non-deforming valve that did not have distinct

inner and outer portions was fundamentally different than the use of a valve separated

into isolated inner portions and deformable outer portions. Id. at *8. Accordingly, the

district court held that no reasonable jury could find that the gimbal in the VersaPort

Plus was an equivalent of the structure in the ring-levers-teeth embodiment. Id.

       On appeal to this court, the majority of the panel vacated the grant of summary

judgment and remanded for further proceedings. 1 Applied II, 448 F.3d at 1337. The



       1
              Judge Dyk dissented.


2008-1416                                    6
majority of the panel found error in the district court’s consideration of the deforming

outer valve portions of the ring-levers-teeth embodiment in its equivalency analysis.

However, as will be discussed in greater detail below, the parties vigorously disagree

over whether the majority simply held that there was a genuine issue of material fact

that precluded summary judgment, or whether the holding was that the outer portions of

the ring-levers-teeth embodiment are entirely irrelevant to the equivalency analysis.

         On remand, the case continued to a trial before a jury. Before trial, Applied filed

a motion in limine requesting that the court preclude U.S. Surgical from presenting to

the jury non-infringement theories that relied on the outer portions of the ring-levers-

teeth embodiment. The district court denied the motion. At trial, U.S Surgical argued to

the jury that the deformation of the outer portions of the ring-levers-teeth embodiment

was the “9,000-pound gorilla that decides the case.” J.A. 2785. The jury returned a

verdict that U.S Surgical neither infringed claim 18 of the ’553 patent nor proved that the

claim was obvious.       After trial, Applied moved for judgment as a matter of law of

infringement, or, in the alternative, a new trial. The district court denied these motions,

holding that the deforming outer portions of the ring-levers-teeth embodiment are

relevant to the “way” prong of the § 112, ¶ 6 equivalency analysis. Applied Med. Res.

Corp. v. U.S. Surgical Corp., 549 F. Supp. 2d 1208, 1209 (C.D. Cal. 2008) (“Applied

III”).   Applied timely appealed the district court’s denial of a new trial.      We have

jurisdiction under 28 U.S.C. § 1295(a)(1).

                                      II. DISCUSSION

         Under applicable Ninth Circuit law, this court reviews the district court’s order

denying a motion for a new trial for abuse of discretion. Molski v. M.J. Cable, Inc., 481




2008-1416                                     7
F.3d 724, 728 (9th Cir. 2007). An erroneous evidentiary ruling is grounds for a new trial

“only if the error more likely than not affected the verdict.” In re First Alliance Mortgage

Co., 471 F.3d 977, 999 (9th Cir. 2006). Whether the district court followed the mandate

set forth by this court on the first appeal is a question of law that we review de novo.

Laitram Corp. v. NEC Corp., 115 F.3d 947, 950 (Fed. Cir. 1997).

         Means-plus-function claim limitations “shall be construed to cover the

corresponding structure, material, or acts described in the specification and equivalents

thereof.” 35 U.S.C. § 112, ¶ 6. During claim construction, the court must identify the

claimed function and determine the corresponding structure disclosed in the

specification. 2 IMS Tech., Inc. v. Haas Automation, Inc., 206 F.3d 1422, 1430 (Fed. Cir.

2000). In order to prove literal infringement, the patentee must show “that the relevant

structure in the accused device perform[s] the identical function recited in the claim and

[is] identical or equivalent to the corresponding structure in the specification.” Lockheed

Martin Corp. v. Space Sys./Loral, Inc., 324 F.3d 1308, 1320 (Fed. Cir. 2003). If the

relevant structure in the accused device is not identical to the corresponding structure in

the specification, the test for § 112, ¶ 6 equivalence is whether the two structures

“perform the identical function, in substantially the same way, with substantially the

same result.” Kemco Sales, Inc. v. Control Papers Co., 208 F.3d 1352, 1364 (Fed. Cir.

2000).       Whether the relevant structure in the accused device is an equivalent is a

question of fact. IMS Tech., 206 F.3d at 1430. In this case, only the “way” portion of

the function-way-result test is at issue. See Applied III, 549 F. Supp. 2d at 1209.

         2
             Adopting Applied’s terminology, we will refer to the corresponding
structure identified during claim construction as “identified structure.” Parts the




2008-1416                                    8
       Applied argues that the district court committed reversible error by allowing U.S.

Surgical to repeatedly argue to the jury that the deformation of the outer valve portions

was relevant to the “way” in which the ring-levers-teeth embodiment performed the

“permitting to float” function. Applied maintains that because the outer valve portions

are not part of the structure identified in the court’s construction of element [f], they are

legally irrelevant to the “way” in which that structure performs the claimed functions. By

allowing U.S. Surgical to argue that the deformation of the outer portions was the “9,000

pound gorilla that decides the case,” Applied contends, the district court violated both

the mandate from the prior appeal and this court’s precedent. We disagree.

                                   A. The Prior Appeal

       Applied argues that this court’s previous decision held that the outer portions of

the valve in the ring-levers-teeth embodiment are irrelevant to the “way” in which that

embodiment performs the “permitting to float” function.         In contrast, U.S. Surgical

contends that the opinion did not broadly declare the outer valve portions legally

irrelevant to the “way” analysis. Rather, U.S. Surgical argues, the opinion simply held

that the district court ignored a genuine issue of material fact by treating element [f] as

requiring that the accused device have distinct and deformable outer valve portions.

       We agree with U.S. Surgical that the prior panel did not purport to go so far as to

declare the outer portions legally irrelevant to the “way” analysis. The opinion made

clear that the only issue before it was “whether, under the district court’s adopted claim

construction, there exists a genuine issue of material fact that the two [structures]




invention disclosed in the specification but not identified as corresponding structure
during claim construction will be referred to as “unidentified structure.”


2008-1416                                    9
perform the claimed functions in substantially the same way.” Applied II, 448 F.3d at

1334.

        Moreover, Applied incorrectly characterizes the panel’s statement that “the

district court improperly imported unclaimed functions when analyzing the way in which

the disclosed embodiment performed the claim function” as a mandate that the outer

portions are legally irrelevant to the “way” analysis. Id. at 1335. Our precedent is clear

that a court must not import unclaimed functions into means-plus-function limitations.

See, e.g., JVW Enters., Inc. v. Interact Accessories, Inc., 424 F.3d 1324, 1331 (Fed.

Cir. 2005). In other words, a court cannot require the structure in the accused device to

perform functions that are not present in the claim. In Applied II, the majority mentioned

two ways in which such an error could occur.         First, a court can err during claim

construction by “defining a claimed function to require more than is actually claimed.”

Applied II, 448 F.3d at 1334. Second, a court can err during the infringement analysis

by “improperly determin[ing] the way in which the disclosed structure performs the

previously-defined function.” Id. Stated differently, a court cannot require as part of the

“way” analysis functions that were not properly identified during claim construction. This

does not mean, however, that aspects of the claimed invention beyond those stated in

the means-plus-function limitation are necessarily irrelevant to the “way” in which the

disclosed structure works. Indeed, such a rule would conflate the “way” and “function”

prongs of the function-way-result test because under that rule any articulation of why

the “way” in which the accused device operates is different than the “way” in which the




2008-1416                                   10
identified structure operates would be, by definition, a description of either an irrelevant

extraneous function or an improper additional function. 3

       In the prior appeal, the panel held that the district court committed the above-

described second type of error by requiring that the accused device contain

mechanically separated non-deforming inner valve portions and deforming outer valve

portions. Id. at 1334-37. Because the deformation of the outer valve portions was not a

function that could properly be required as part of element [f], the panel concluded that

the district court erred by requiring that functionality as part of its “way” analysis. Id.

Next, the panel considered whether there was a genuine factual dispute concerning

whether the VersaPort Plus’s gimbal performed both the “supporting” and “permitting to

float” functions in substantially the same “way” as the ring-levers-teeth structure. Id. at

1335-37. After reviewing the declaration of Applied’s expert, Dr. Sheehan, the majority

concluded that summary judgment was inappropriate. Id. Nowhere in its discussion did

the majority set forth a legal rule that unidentified structure is legally irrelevant to the

“way” analysis.

       Properly identified, this court’s mandate in the prior appeal was that deformable

outer valve portions cannot be required as part of element [f]. Because the district court

properly instructed the jury on the claim construction without indicating that deforming

outer valve portions were required by claim 18, our mandate was not violated. See



       3
             We recognize that the line between permissibly finding aspects of the
claimed invention relevant to the “way” the identified structure functions and
impermissibly requiring those “functions” as part of the means-plus-function limitation
may not always be precisely defined. However, such a line is necessary if we are to
give independent meaning to both the “function” and “way” prongs of the equivalency
test.



2008-1416                                   11
Applied III, 549 F. Supp. 2d at 1212. Under the mandate, the district court was free to

allow U.S. Surgical to argue that the outer valve portions are relevant to the “way” the

ring-levers-teeth embodiment performs the claimed functions.

                               B. This Court’s Precedent

      Regardless of the mandate in the prior appeal, Applied argues that this court’s

precedent clearly establishes that parts of an embodiment that are not identified during

claim construction as corresponding to the claimed functions cannot be relevant to the

“way” analysis. U.S. Surgical responds that Applied’s alleged rule is in fact contrary to

the precedent of this court.    According to U.S. Surgical, this court has previously

referred to unidentified structure during the “way” analysis and has stated that the

equivalency analysis should involve looking outside the identified structure to “the

context of the invention,” IMS Tech., 206 F.3d at 1436. While we appreciate Applied’s

concerns about a roving “way” analysis that permits defendants to confuse or mislead

the jury by seizing upon structural differences that are in no way related to the means-

plus-function limitation, we conclude that U.S. Surgical’s references to the outer valve

portions comport with our precedent.

      Applied is correct that we said in Cardiac Pacemakers, Inc. v. St. Jude Medical,

Inc. that the “corresponding structure must include all structure that actually performs

the recited function.” 296 F.3d 1106, 1119 (Fed. Cir. 2002). Applied is also correct that

under Asyst Technologies, Inc. v. Empak, Inc., parts of an invention that do not perform

the recited function are not properly included in the identified structure. 268 F.3d 1364,

1371-72 (Fed. Cir. 2001). However, no one is disputing these rules of law in this case.

The district court and U.S. Surgical agree with Applied that the outer valve portions of




2008-1416                                  12
the ring-levers-teeth embodiment are not part of the identified structure, and the jury

instructions reflected this agreement. J.A. 3588. Cardiac Pacemakers and Asyst do

not, however, answer the question of whether additional parts of the claimed invention

can be relevant to the “way” in which the identified structure functions.

         The most instructive case cited by either party is Cross Medical Products, Inc. v.

Medtronic Sofamor Danek, Inc., 424 F.3d 1293 (Fed. Cir. 2005). In Cross Medical, this

court considered a patent related to a fixation device used to stabilize and align the

bones of a patient’s spine. 424 F.3d at 1297. The claim at issue included a “securing

means” limitation, which the district court found was governed by § 112, ¶ 6. Id. at

1306. An embodiment of the invention, taken from Figure 3 of the patent, is shown

below.




On appeal, this court identified the function of the securing means as “caus[ing] the rod

[18] to bear against the rod-receiving channel [51-52] by applying a compressive force

in the direction of the vertical axis while ensuring that substantially equal forces are

applied along the longitudinal axis of the rod [18] on opposite sides—either inside or


2008-1416                                    13
outside—of the rod-receiving channel [51-52].” Id. at 1307. This court identified the

structure corresponding to the function as “a nut [27] with internal threads cooperating

with the external threads of the anchor seat [23] (an ‘external nut’).” Id. at 1308.

       The accused product in Cross Medical used a “set screw” to hold a rod in a

receiver member, as shown below:




Id. at 1298. In contrast to the nut shown in Figure 3, which had internal threads that

mated with threads on the outside of the anchor seat, the set screw had external

threads that mated with threads on the inside of the receiving member.                 Id.   An

important effect of this difference, the defendant argued, was that set screws “apply a

splaying force to the side walls of the anchor seat while external nuts do not.” Id. at

1315. Relying in part on the alleged splaying force, this court held that there was “a

genuine issue of material fact as to whether the set screw accomplishes the claimed

function in substantially the same way as the external nut.” Id. at 1316. Thus, the court

considered the side walls of the anchor seat, which were not mentioned in its

identification of the corresponding structure, as part of its “way” analysis.

       Applied’s attempt to distinguish the side walls in Cross Medical from the outer

valve portions at issue in this case is unpersuasive. Applied maintains that, contrary to


2008-1416                                    14
U.S. Surgical’s assertions, the side walls were in fact identified structure. Specifically,

Applied argues that because the identified structure included the “external threads of

the anchor seat,” the anchor seat is part of the identified structure. Appellant’s Reply

Br. 18. Further, Applied asserts that because the side walls are an “integral part” of the

anchor seat, and because the threads are “part” of the side walls of the anchor seat, the

side walls are also part of the identified structure. Id. Setting aside our concern that

Applied’s approach to defining the identified structure appears inconsistent with our

precedent, 4 we conclude that U.S. Surgical’s reliance on the outer valve portions was

permissible even under this approach. The identified structure in the present case is “a

ring that is capable of moving side to side because it has a diameter less than that of

the recess that holds it, and that is connected to levers with teeth that are in turn

attached to the septum valve.” Applied II, 448 F.3d at 1330 (emphasis added). Thus,

under Applied’s interpretation of Cross Medical, the septum valve and all “integral parts”

thereof can be considered during the “way” analysis. According to Figure 6 and the

specification’s description of the ring-levers-teeth embodiment, “[t]he septum valve 36



      4
               Under Asyst, the identified structure cannot include that which does not
perform the recited function. 268 F.3d at 1370. In Cross Medical, the identified
structure was “a nut with internal threads cooperating with the external threads of the
anchor seat (an ‘external nut’).” 424 F.3d at 1308. While the external threads on the
anchor seat were involved in the recited function, there was no suggestion that any
other part of the anchor seat, including the side walls, participated. See Asyst, 268 F.3d
at 1371 (“The corresponding structure to a function set forth in a means-plus-function
limitation must actually perform the recited function, not merely enable the pertinent
structure to operate as intended . . . .”). Thus, it seems inconsistent with Asyst to
expand the identified structure to include either the side walls or the rest of the anchor
seat. We are also concerned about the potential scope of Applied’s logic. For example,
if the corresponding structure was identified as “wheels cooperating with the axle of the
car,” would the car itself, as well as everything that could reasonably be deemed an
“integral part” of the car, such as the steering wheel, also be considered identified
structure? This would almost certainly conflict with Asyst.


2008-1416                                   15
also includes outer portions 39 which extend radially outwardly from inner portions 37.”

’553 patent, col.4 ll.44-46. Thus, even using Applied’s approach, we conclude that the

outer portions are an “integral part” of the septum valve and can be considered as part

of the “way” analysis.

       Finally, we emphasize that we do not purport to create a new standard of

relevance for evidence pertaining to the “way” prong of the function-way-result test.

Instead, our holding is limited to the conclusion that Applied’s argument for excluding

the outer valve portions from consideration cannot be squared with Cross Medical, and

thus Applied has not persuaded us that the district court erred.

                                     III. CONCLUSION

       For the foregoing reasons, the district court’s denial of Applied’s motion for a new

trial on infringement is affirmed.




2008-1416                                   16
