Holding: Claim construction is to be done on a claim-by-claim basis. The way in which disclosed subject matter is claimed may vary between individual claims of a patent. Although the meaning of claim terms must be construed consistently between the claims of the same patent, the functional construction of these claim terms may change as long as each claim clearly defines that functional limitation.
A total of 40 claims from a family of seven patents owned by Teleflex were asserted against Medtronic for patent infringement. These patents are each directed to a coaxial guide catheter that is deliverable through standard guide catheters. The district court found the claim limitation “substantially rigid portion/segment” within these claims to be indefinite and invalidated all the asserted claims. As shown below, the claimed extension catheter includes three parts: a proximal substantially rigid portion (yellow), a reinforced portion (blue), and a flexible tip (pink). The guide catheter also includes a side opening that is indicated by the red circle.
In a first group (Group 1) of asserted claims, this side opening is recited as being part of the claimed “substantially rigid portion/segment” and in a second group (Group 2) of asserted claims, the side opening is recited as being separate and distal of the “substantially rigid portion/segment.”
The district court questioned how the term “substantially rigid portion/segment” could include the side opening for one set of claims and then not include the side opening for a separate set of claims, potentially allowing the same accused product to infringe two “mutually exclusive” sets of claims. Because of the possibility of confusion, the district court found all the claims that included the phrase “substantially rigid portion/segment” to be indefinite.
The Federal Circuit found that the district court erred in determining the Group 1 and the Group 2 claims to be “mutually exclusive” and indefinite, stating that claims within a patent may vary the way in which they claim disclosed subject matter. Independent claims are not required to be totally consistent with each other, and each independent claim is a different ordered combination of limitations.
Citing Nautilus, the Federal Circuit emphasized that claims are only required to describe the scope of the invention with reasonable certainty, and that claim construction should be conducted on a claim-by-claim basis. However, claim terms still need to be construed consistently within the same patent. For this case, the level of rigidity required of a portion of the guide catheter to constitute a “substantially rigid portion/segment” does not change and is consistent for each claim term. Although, the boundary of the “substantially rigid portion/segment” does not need to be consistent across each claim. This is a functional limitation, and as long as each claim clearly indicates to a person of skill in the art where the boundary should be drawn in the context of that claim, the claim is not indefinite.
Citation: Vascular Sols. LLC v. Medtronic, Inc., 117 F.4th 1361 (Fed. Cir. 2024)
Federal Circuit Precedential 
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