Hill-Rom Services, Inc. v. Stryker Corporation

United States Court of Appeals

for the Federal Circuit

______________________

HILL-ROM SERVICES, INC., HILL-ROM

COMPANY, INC., AND HILL-ROM

MANUFACTURING, INC.,

Plaintiffs-Appellants,

v.

STRYKER CORPORATION (doing business as

Stryker Medical) AND STRYKER SALES

CORPORATION,

Defendants-Appellees.

______________________

2013-1450

______________________

Appeal from the United States District Court for the

Southern District of Indiana in No. 11-CV-1120, Judge

Jane Magnus-Stinson.

______________________

Decided: June 27, 2014

______________________

DAVID K. CALLAHAN 1, Kirkland & Ellis, LLP, of Chi-

cago, Illinois, argued for plaintiffs-appellants. With him

on the brief were MARY E. ZAUG and JOSHUA M. REED.

1 Mr. Callahan subsequently withdrew from the

case.

2 HILL-ROM SERVICES, INC. v. STRYKER CORPORATION

STEVEN E. DERRINGER, Bartlit Beck Herman Pa-

lenchar & Scott LLP, of Chicago, Illinois, argued for

defendants-appellees. With him on the brief were

CHRISTOPHER J. LIND and BRIAN C. SWANSON.

______________________

Before MOORE, SCHALL, and REYNA, Circuit Judges.

Opinion for the court filed by Circuit Judge MOORE.

Dissenting opinion filed by Circuit Judge REYNA.

MOORE, Circuit Judge.

Hill-Rom Services, Inc., Hill-Rom Company, Inc., and

Hill-Rom Manufacturing, Inc. (collectively, Hill-Rom)

appeal from the district court’s grant of summary judg-

ment that Stryker Corporation and Stryker Sales Corpo-

ration (collectively, Stryker) do not infringe asserted

claims of U.S. Patent Nos. 5,699,038 (’038 patent),

6,147,592 (’592 patent), and 7,538,659 (’659 patent).

Because the district court’s judgment of non-infringement

was premised on erroneous claim constructions, we re-

verse and remand.

BACKGROUND

The patents-in-suit, which claim priority to the same

parent application, 2 are directed to systems and methods

for enabling hospital personnel to remotely monitor the

status of hospital beds. ’038 patent col. 1 l. 61–col. 2 l. 38.

The patents-in-suit disclose hospital beds equipped with

sensors that monitor bed parameters, such as the pa-

tient’s presence in the bed and the bed height. Id. col. 2 ll.

6–9, col. 5 l. 63–col. 6 l. 23. These systems send data

about the status of a hospital bed to a remote location for

monitoring by hospital personnel. Id. col. 2 ll. 59–65.

2 The ’592 and the ’659 patents are continuations of

the ’038 patent.

HILL-ROM SERVICES, INC. v. STRYKER CORPORATION 3

Claim 1 of the ’038 patent, from which asserted claim 13

depends, contains three of the four disputed claim limita-

tions and is treated by the parties as representative:

A bed status information system . . . comprising:

at least one bed condition input signal

generator . . . ;

an interface board including a proces-

sor . . . said interface board operable for

receiving said bed condition input signal

and processing said input signal to create

bed condition messages indicating the sta-

tus of the monitored condition;

a processing station remote from the bed

and coupled with said interface board by a

datalink, the processing station operable

for receiving said bed condition messages

over the datalink and processing said

messages . . . such that the status of the

monitored condition of the patient bed is

indicated to attending personnel at a loca-

tion remote from the bed.

’038 patent claim 1 (emphases added). Claim 17 of the

’592 patent includes the fourth disputed claim term and

recites: “The patient monitoring system . . . wherein the

message includes message validation information.” ’592

patent claim 17 (emphasis added).

Hill-Rom brought suit against Stryker alleging in-

fringement of various claims. The parties stipulated to

non-infringement based on the court’s construction of the

claim terms “datalink,” “interface board including a

processor,” “message validation information,” and “bed

condition message.” Hill-Rom appeals. We have jurisdic-

tion under 28 U.S.C. § 1295(a)(1).

4 HILL-ROM SERVICES, INC. v. STRYKER CORPORATION

DISCUSSION

We review claim construction de novo. Lighting Bal-

last Control LLC v. Philips Elecs. N. Am. Corp., 744 F.3d

1272, 1276–77 (Fed. Cir. 2014) (en banc). Claim terms

are generally given their plain and ordinary meanings to

one of skill in the art when read in the context of the

specification and prosecution history. See Phillips v.

AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en

banc). “There are only two exceptions to this general rule:

1) when a patentee sets out a definition and acts as his

own lexicographer, or 2) when the patentee disavows the

full scope of the claim term either in the specification or

during prosecution.” Thorner v. Sony Computer Entm’t

Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012).

A. “datalink”

The district court construed the term “datalink” to

mean “a cable connected to the bed that carries data.”

Hill-Rom Servs., Inc. v. Stryker Corp., No. 1:11-CV-1120,

2013 WL 364568, at *8 (S.D. Ind. Jan. 30, 2013) (District

Court Decision). Hill-Rom argues that the district court

erred by limiting “datalink” to a “cable,” i.e., a wired

datalink. It argues that “datalink” should be given its

plain and ordinary meaning, which is a link that carries

data and encompasses both wired and wireless connec-

tions. Stryker argues that the district court was correct

that the plain and ordinary meaning of “datalink” is

limited by the specification to a wired connection. We

agree with Hill-Rom.

While we read claims in view of the specification, of

which they are a part, we do not read limitations from the

embodiments in the specification into the claims. Liebel-

Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 904 (Fed.

Cir. 2004). We depart from the plain and ordinary mean-

ing of claim terms based on the specification in only two

instances: lexicography and disavowal. Thorner, 669 F.3d

at 1365. The standards for finding lexicography and

HILL-ROM SERVICES, INC. v. STRYKER CORPORATION 5

disavowal are exacting. “To act as its own lexicographer,

a patentee must clearly set forth a definition of the dis-

puted claim term other than its plain and ordinary mean-

ing” and must “clearly express an intent to redefine the

term.” Id. at 1365 (quotations omitted).

“[T]his court has expressly rejected the contention

that if a patent describes only a single embodiment, the

claims of the patent must be construed as being limited to

that embodiment.” Liebel-Flarsheim, 358 F.3d at 906

(listing cases rejecting attempts to import limitations

from the specification into the claims). The court contin-

ued, “[e]ven when the specification describes only a single

embodiment, the claims of the patent will not be read

restrictively unless the patentee has demonstrated a clear

intention to limit the claim scope using ‘words or expres-

sions of manifest exclusion or restriction.’” Id. (quoting

Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1327

(Fed. Cir. 2002)).

Disavowal requires that “the specification [or prosecu-

tion history] make[] clear that the invention does not

include a particular feature,” SciMed Life Sys., Inc. v.

Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1341

(Fed. Cir. 2001), or is clearly limited to a particular form

of the invention, Edwards Lifesciences LLC v. Cook Inc.,

582 F.3d 1322, 1330 (Fed. Cir. 2009) (“[W]hen the pre-

ferred embodiment is described in the specification as the

invention itself, the claims are not necessarily entitled to

a scope broader than that embodiment.”) (quotation

omitted). For example, we have held that disclaimer

applies when the patentee makes statements such as “the

present invention requires . . . ” or “the present invention

is . . . ” or “all embodiments of the present invention

are . . . .” See Regents of Univ. of Minn. v. AGA Med.

Corp., 717 F.3d 929, 936 (Fed. Cir. 2013); Honeywell Int’l,

Inc. v. ITT Indus., Inc., 452 F.3d 1312, 1316–19 (Fed. Cir.

2006); SciMed, 242 F.3d at 1343–44; Astrazeneca AB v.

Hanmi USA, Inc., 554 F. App’x 912, 915 (Fed. Cir. 2013)

6 HILL-ROM SERVICES, INC. v. STRYKER CORPORATION

(nonprecedential). We have also found disclaimer when

the specification indicated that for “successful manufac-

ture” a particular step was “require[d].” Andersen Corp.

v. Fiber Composites, LLC, 474 F.3d 1361, 1367 (Fed. Cir.

2007) (“Those statements are not descriptions of particu-

lar embodiments, but are characterizations directed to the

invention as a whole.”). We found disclaimer when the

specification indicated that the invention operated by

“pushing (as opposed to pulling) forces,” and then charac-

terized the “pushing forces” as “an important feature of

the present invention.” SafeTCare Mfg., Inc. v. Tele-

Made, Inc., 497 F.3d 1262, 1269–70 (Fed. Cir. 2007). We

found disclaimer when the patent repeatedly disparaged

an embodiment as “antiquated,” having “inherent inade-

quacies,” and then detailed the “deficiencies [that] make it

difficult” to use. Chicago Bd. Options Exch., Inc. v. Int’l

Sec. Exch., LLC, 677 F.3d 1361, 1372 (Fed. Cir. 2012)

(“[T]he specification goes well beyond expressing the

patentee’s preference . . . and its repeated derogatory

statements about [a particular embodiment] reasonably

may be viewed as a disavowal . . . .”). Likewise, we found

disclaimer limiting a claim element to a feature of the

preferred embodiment when the specification described

that feature as a “very important feature . . . in an aspect

of the present invention” and disparaged alternatives to

that feature. Inpro II Licensing, S.A.R.L. v. T-Mobile

USA Inc., 450 F.3d 1350, 1354–55 (Fed. Cir. 2006).

There is no such disclaimer or lexicography here.

There are no words of manifest exclusion or restriction.

The patents-in-suit do not describe the invention as

limited to a wired datalink. There is no disclosure that,

for example, the present invention “is,” “includes,” or

“refers to” a wired datalink and there is nothing express-

ing the advantages, importance, or essentiality of using a

wired as opposed to wireless datalink. Nor is there lan-

guage of limitation or restriction of the datalink. Nothing

in the specification or prosecution history makes clear

HILL-ROM SERVICES, INC. v. STRYKER CORPORATION 7

that the invention is limited to use of a cable as a data-

link. Absent such language, we do not import limitations

from the specification into the claims.

It is true that the specifications of the patents-in-suit

use the terms “datalink 39,” “cable 39,” and “serial data-

link 39” to describe the same component of the preferred

embodiment. ’038 patent col. 12 ll. 61–64, col. 6 ll. 29–33,

47–50. However, those terms are used synonymously only

in describing a particular numbered component in the

figure depicting the preferred embodiment, and never in

describing the datalink of the invention generally. See id.

This disclosed embodiment undisputedly uses a cable to

convey data, and the patent does not disclose an alterna-

tive embodiment that uses a wireless datalink. However,

absent some language in the specification or prosecution

history suggesting that the wired connection is important,

essential, necessary, or the “present invention,” there is

no basis to narrow the plain and ordinary meaning of the

term datalink to one type of datalink—a cable. There are

no magic words that must be used, but to deviate from the

plain and ordinary meaning of a claim term to one of skill

in the art, the patentee must, with some language, indi-

cate a clear intent to do so in the patent. And there is no

such language here.

In fact, this specification states that the figures de-

picting the use of a wired datalink merely “illustrate

embodiments of the invention.” ’038 patent col. 4 ll. 59–

65; see also id. col. 5 ll. 30–31 (“DETAILED

DESCRIPTION OF SPECIFIC EMBODIMENTS”); id. col.

22 ll. 20–31 (the “description of various embodiments” is

not intended “to restrict or in any way limit the scope of

the appended claims to such detail”). Nothing in the

language of the specification suggests that datalink

should be limited to the cable used in the preferred em-

bodiment. Therefore, we see no basis for deviating from

the plain and ordinary meaning.

8 HILL-ROM SERVICES, INC. v. STRYKER CORPORATION

An examiner’s statement during prosecution of later

unrelated U.S. Patent Application No. 13/336,044 (’044

application) that the ’038 patent does “not teach . . . the

bed having a wireless receiver” does not convince us that

one of skill in the art at the time of filing (i.e., the effec-

tive filing date of the patents-in-suit) would understand

“datalink” to be limited to wired connections. The exam-

iner stated only that the ’038 patent specification does

“not teach” a wireless receiver, and he expressed no views

on the meaning of the term “datalink.” No doubt the

patentee would agree with the examiner that the specifi-

cation does not contain an embodiment that teaches use of

a wireless receiver. However, a patent specification need

not disclose or teach what is known in the art. Streck,

Inc. v. Research & Diagnostic Sys., Inc., 665 F.3d 1269,

1288 (Fed. Cir. 2012) (“It is well-established . . . that a

specification need not disclose what is well-known in the

art.”); see also Hybritech Inc. v. Monoclonal Antibodies,

Inc., 802 F.2d 1367, 1384 (Fed. Cir. 1986). The absence of

an embodiment teaching a wireless receiver does not

prevent the claimed datalink from being given its plain

and ordinary meaning at the relevant time. Holding that

the plain meaning of datalink at the time of the filing

included both wired and wireless connections for carrying

data is not inconsistent with the examiner’s statement

that the ’038 patent does not teach a wireless receiver.

We do not interpret the examiner’s statement about the

teachings of the specification as one about his under-

standing of the meaning of the term “datalink” to one of

skill in the art at the time of filing.

Indeed, the only evidence in the record of how one of

ordinary skill in the art at the time of filing would under-

stand the term “datalink” is from Hill-Rom’s expert. He

testified that as of the effective filing date of the patents-

in-suit, “a person of ordinary skill would understand that

‘datalink’ does not refer solely to physical connection” and

HILL-ROM SERVICES, INC. v. STRYKER CORPORATION 9

“can be established over wired, wireless, optical, or other

connection.” J.A. 454, 472.

Stryker does not dispute that wireless datalinks were

known at the time the patent was filed, nor does it sug-

gest that the plain meaning of datalink at the relevant

time was a cable. Instead, Stryker insists that “datalink”

ought to be given its plain and ordinary meaning in the

context of the specification. We agree. This is not, how-

ever, a license to read limitations from the embodiments

in the specification into the claims. The plain and ordi-

nary meaning of datalink at the relevant time is a connec-

tion that carries data. And neither the specification nor

the prosecution history gives reason to limit the term to a

wired connection.

This construction—a datalink is a link that carries

data and can be wired or wireless—is supported by the

claims of the patent. The ’659 patent contains several

dependent claims that expressly recite the requirement of

a wired datalink, and they depend from independent

claims that do not contain such a requirement. Claim 2,

which depends from claim 1, recites “[t]he system of claim

1, wherein the datalink comprises a wired datalink.” ’659

patent claim 2. The only distinction between claim 1 and

claim 2 is the limitation that the “datalink” is a wired

datalink. See also id. claims 10, 18. “[T]he presence of a

dependent claim that adds a particular limitation raises a

presumption that the limitation in question is not found

in the independent claim.” Liebel-Flarsheim, 358 F.3d at

910. This presumption is especially strong where the

limitation in dispute is the only meaningful difference

between an independent and dependent claim. Id. Of

course, claim differentiation is not a hard and fast rule,

and the presumption can be overcome by a contrary

construction required by the specification or prosecution

history. Seachange Int’l, Inc. v. C-COR, Inc., 413 F.3d

1361, 1369 (Fed. Cir. 2005). However, nothing in this

specification or prosecution history rebuts the presump-

10 HILL-ROM SERVICES, INC. v. STRYKER CORPORATION

tion established by the doctrine of claim differentiation.

The district court explained that if datalink was not

limited to a wired link, and in particular, if the term were

construed to “include wireless communication,” the claim

would not be enabled. District Court Decision at *7.

Enablement concerns do not justify departing from the

plain and ordinary meaning of “datalink.” Where the

meaning of a claim term is clear, as it is here, we do not

rewrite the claim to preserve its validity. Liebel-

Flarsheim, 358 F.3d at 911. Moreover, the parties point

to no evidence in this record that establishes an enable-

ment problem and the district court did not cite to any.

Id. Courts should be cautious not to allow claim construc-

tion to morph into a mini-trial on validity. Claim terms

should be given their plain and ordinary meaning to one

of skill in the art at the relevant time and cannot be

rewritten by the courts to save their validity. We hold

that “datalink” in the claims at issue is any link over

which data is transferred and can be wired or wireless.

The dissent argues that our construction is incorrect

because it defines “datalink” in functional terms. But, as

we have previously explained, defining a particular claim

term by its function is not improper and “is not sufficient

to convert a claim element containing that term into a

‘means for performing a specified function’ within the

meaning of [35 U.S.C. § 112(6)].” Greenberg v. Ethicon

Endo-Surgery, Inc., 91 F.3d 1580, 1583 (Fed. Cir. 1996).

Indeed, “[m]any devices take their names from the func-

tions they perform. The examples are innumerable, such

as ‘filter,’ ‘brake,’ ‘clamp,’ ‘screwdriver,’ or ‘lock.’” Id.

There is nothing improper about defining “datalink” as a

link that conveys data. If one of skill in the art at the

relevant time would understand that datalinks can be

both wired and wireless, then the patentee is entitled to

HILL-ROM SERVICES, INC. v. STRYKER CORPORATION 11

the full range of that claim term. 3

Next, the dissent contends that a person of ordinary

skill could not have understood “datalink” to include

wireless connections because there is no evidence that

wireless connections were known to persons of ordinary

skill in the art at the relevant time. To the contrary, the

record evidence establishes that wireless connections

were known and used by persons of ordinary skill during

the relevant time frame. The Background of the Inven-

tion of the patents-in-suit describes a prior art patent

disclosing a “personnel locating system” using “infrared

transmitters,” i.e., wireless transmitters, to transmit a

“pulse-coded signal which corresponds to the identity of

the wearer.” ’038 patent col. 1 ll. 42–46 (describing U.S.

Patent No. 4,275,385). This is an unequivocal disclosure,

in the patent itself, of wireless datalinks. Furthermore,

Hill-Rom’s expert testified that at the time of the patent’s

filing, a person of ordinary skill would have understood

“datalink” to include a wireless connection. J.A. 454, 472.

Even Stryker does not dispute that, at the relevant time

period, data could be carried through a wired or wireless

connection. We hold that, consistent with the record

evidence, the plain and ordinary meaning of datalink at

the time of the patent filing would be a link that carries

data in a wired or wireless fashion.

B. “interface board including a processor”

The district court construed “interface board including

a processor” as “a board that processes an input signal to

3 The dissent also raises a concern that our con-

struction of “datalink” could theoretically cover unknown

technologies created in the future. Dissent at 2. Such

unknown technologies are not at issue here, however, and

we see no persuasive reason to depart from the plain and

ordinary meaning of a term based on such unknowns.

12 HILL-ROM SERVICES, INC. v. STRYKER CORPORATION

create bed condition messages and sends those messages

to a remote location via the wall interface unit.” District

Court Decision at *9. The court noted that “[i]t can also

receive messages through the wall interface unit.” Id.

Hill-Rom argues that the “interface board including a

processor” should be given its plain and ordinary mean-

ing, which is the interface between the bed components

and the off-bed components that processes the bed condi-

tion input signals into bed condition messages. First,

Hill-Rom argues that the district court improperly im-

ported “the wall interface unit” limitation into “interface

board including a processor.” Second, it contends that the

district court erred by requiring the “interface board

including a processor” to receive messages from a remote

location.

Stryker responds that the district court’s inclusion of

the “wall interface” unit in its construction is supported

by the specification, and argues further that the construc-

tion should require “a board that includes the electronics

that control the sending of messages to, and the receiving

of messages from, a remote location.” It argues that the

patents-in-suit describe the invention as including an

interface board that is capable of sending and receiving

messages from a remote location through the wall inter-

face unit. See ’038 patent col. 3 ll. 53–56; col. 4 ll. 18–21;

col. 19 ll. 4–17. Moreover, Stryker argues that several

dependent claims describe sending messages to the inter-

face board, suggesting that the interface board must be

capable of receiving messages from a remote location. See

id. claims 9, 13, 14, 15, 24.

We hold that the “interface board including a proces-

sor” is the interface between the bed components and the

off-bed components that processes the bed condition input

signals. An interface is a point of interaction. Interface

devices are sometimes capable of both sending and receiv-

ing data and sometimes limited to sending data. Claim 1

of the ’038 patent articulates with specificity the functions

HILL-ROM SERVICES, INC. v. STRYKER CORPORATION 13

that the claimed interface board must perform: the inter-

face board must “receiv[e] . . . bed condition input sig-

nal[s],” “process[] said input signal to create bed condition

messages,” and send “bed condition messages over the

datalink” to “the [remote] processing station.” ’038 patent

claim 1. That is all this claim requires in terms of the

functionality of the interface board. Thus the “interface

board including a processor” must receive bed condition

inputs, create the bed condition message, and send it to

the remote processing station. Asserted claim 13 adds the

limitation that the interface board must include a “net-

work port electrically coupled to the operating network for

receiving said network data message, the interface board

operable to process said data message and create a bed

condition message.” While the plain meaning of claim 1

does not require that the interface board be capable of

receiving messages from the remote processing station,

claim 13 adds this functional requirement. Dependent

claims 9, 13, 14, 15, and 24 each add, among other re-

quirements, the functional requirement that the interface

board receive messages from a remote location. ’038

patent claims 9, 13, 14, 15, 24. Under the principles of

claim differentiation, the independent claims are pre-

sumed to be broader. Liebel-Flarsheim, 358 F.3d at 910.

The asserted claims of the ’038 patent are 13, 20, and

26. The district court is correct that the interface board of

claim 13 must be capable of both sending and receiving

messages from a remote location because the claim ex-

pressly includes these limitations. Claim 20, in contrast,

does not require the interface board to receive messages

from a remote location. Claim 20 depends from independ-

ent claim 19. Claim 19, like claim 1, only requires that

the interface board receive bed condition inputs, create

the bed condition message, and send it to the remote

processing station. Claim 20 only adds a limitation

regarding a data field in the bed condition message that

will allow the processing station to determine the identity

14 HILL-ROM SERVICES, INC. v. STRYKER CORPORATION

of the patient bed that generated the message. Claim 20

does not include any limitation that would require the

interface board to receive messages from a remote station.

Therefore, claim 20 is not so limited. In fact, claim 24

adds this limitation to claim 19 and under principles of

claim differentiation, claim 20 is presumed not to include

it. Finally, claim 26 is an independent claim that, like

independent claims 1 and 19, requires only that the

interface board receive bed condition inputs, create the

bed condition message, and send it to the remote pro-

cessing station. The interface board of claim 26 is not

required to be capable of receiving messages from a

remote location.

To be clear, the plain meaning of interface could in-

clude one-way or two-way communication. The claims of

this patent expressly define the requirements of the

interface board. Some of the claims require the interface

board to be able to send messages to a remote location

and other claims require it be capable of both sending and

receiving messages from a remote location.

There is no disavowal or lexicography in this specifi-

cation that causes us to import the receiving from a

remote location limitation into the claims in which it does

not appear. The specification discloses embodiments in

which the interface board receives messages from a re-

mote location. ’038 patent col. 3 ll. 56–59, col. 18 ll. 27–

44. But there is nothing in the specification that requires

that the interface board include this functionality. There

is no language that extolls the virtues of interfaces that

both send and receive messages or language that dispar-

ages interfaces that only send messages. There is no

language in this patent that an interface board capable of

both sending and receiving is an important, essential, or

critical part of the present invention. The “interface

board including a processor” in claim 20 and 26 is a board

with a processor that is capable of receiving bed condition

HILL-ROM SERVICES, INC. v. STRYKER CORPORATION 15

inputs, creating the bed condition message and sending it

to the remote processing station.

Finally, the “interface board including a processor” in

the asserted claims is not required to send messages to a

remote location through a wall interface unit. While it is

true that the specification discloses embodiments in which

the interface board sends the message to a wall interface

unit, which then sends it to a remote location, such a

disclosure does not cause the importation of this structure

into the claims at issue. See, e.g., id. col. 3 ll. 34–44. The

specification states: “In one embodiment of the inven-

tion . . . [t]he LON messages would be received by an

appropriate line transceiver 160 from lines 159 and

processed by microprocessor 140 and sent to the wall

interface unit 40 in accordance with the present inven-

tion.” Id. col. 12 ll. 41–54. The fact that the specification

indicates that in one embodiment, messages are sent to

the wall interface unit “in accordance with the present

invention,” does not mean that a wall interface unit must

be present in all embodiments of the invention. The

specification contains no discussion of the importance,

essentiality, or criticality of the wall unit to the present

invention. In fact, the specification discloses an embodi-

ment in which the interface board sends information to a

remote location without using a wall interface unit inter-

mediary. Id. col. 2 ll. 49–52. The claims at issue do not

require, or even mention, a wall interface unit. There is

no lexicography or disavowal that would support import-

ing this structural limitation from the specification into

the claims. Finally, there are dependent claims that

expressly add this structure. See id. claims 7, 23 (adding

an “interface unit electrically coupled between said inter-

face board and said processing station”). Under principles

of claim differentiation, we presume that the claims

without this limitation do not require it. Liebel-

Flarsheim, 358 F.3d at 910. To the extent that the dis-

trict court required the “interface board including a

16 HILL-ROM SERVICES, INC. v. STRYKER CORPORATION

processor” of the claims at issue to send messages to a

remote location via a wall interface unit, it erred.

C. “message validation information”

The term “message validation information” appears

only in asserted claim 17 of the ’592 patent, which recites

that “the message includes message validation infor-

mation.” ’592 patent claim 17. The district court con-

strued “message validation information” as “a data field

within a message that is used to verify that the message

was received exactly the same as it was sent.” District

Court Decision at *13. Relevant to this conclusion is the

district court’s undisputed construction of “message” as

“[a] plurality of data fields of appropriate length assem-

bled into a defined structure.” Id. at *9.

Hill-Rom contends that the term should be given its

plain and ordinary meaning: “information that validates a

message.” It argues that the specification describes

message verification as simply a status message that

indicates that a bed condition message “was received

properly or was not received properly.” ’592 patent col. 14

ll. 12–13. It argues that the message verification embod-

iment disclosed in the specification detects the presence of

certain errors, but cannot evaluate all aspects of a re-

ceived message to confirm that it is exactly the same as

the sent message. See id. col. 18 ll. 20–35. It argues that

the district court’s construction would exclude this embod-

iment, and is therefore presumptively incorrect.

As an initial matter, we see no reason that “message

validation information” must be limited to a single data

field. There is nothing in the plain meaning of the term

or in the specification that requires all message validation

information to be contained to a single data field. The

district court is correct that “message validation infor-

mation” must be limited to data fields because, based on

the claim language, “message validation information” is

part of a message, and the parties do not dispute that a

HILL-ROM SERVICES, INC. v. STRYKER CORPORATION 17

message is limited to “a plurality of data fields.” Id. claim

17. The summary of the invention states that the mes-

sage includes “a field for verifying that the message was

received by a node exactly the same as it was sent by the

sending node.” Id. col. 3 ll. 55–57. The preferred embod-

iment also discloses using a CHECKSUM for the verifica-

tion field. Id. col. 13 ll. 47–51. These references are not

sufficient to limit the structure of the message validation

information to a single field. There is no suggestion that

utilizing only a single field is important, essential, criti-

cal, or valuable to the present invention. There are no

words of manifest exclusion. We conclude that “message

validation information” is limited to data fields within the

message, but is not limited to a single data field.

The parties also dispute what it means to validate the

message. And more particularly, whether the claimed

“message validation information” must verify that the

message is properly received or received exactly, bit by

bit, as sent. To what level of accuracy or detail must the

verification process confirm the message? The plain

meaning of message validation is to ensure that the

message is valid, i.e., that it confirms the message, that it

ensures that the message fulfills its intended purpose,

that the message conveys the intended information. The

specification is consistent with this understanding of

message validation. The patent explains that the bed

message data “includes a plurality of data fields which

indicate the type of message being sent, (i.e., status

message or bed data message), the length of the message

being sent, the actual data of the message (such as status

data or bed data), and a field for verifying that the mes-

sage was received by a node exactly the same as it was sent

by the sending node such as the bed interface board.” Id.

col. 3 ll. 51–57 (emphasis added). This suggests that the

verification should determine whether exactly the same

message was sent. However, the only disclosed embodi-

ment for message verification is a parity checking routine

18 HILL-ROM SERVICES, INC. v. STRYKER CORPORATION

that uses a CHECKSUM field to determine whether a

“message was received properly or was not received

properly and should be resent.” Id. col. 14 ll. 11–13.

“[T]he CHECKSUM byte [is] equal to the inverted sum of

the other nine message bytes plus one (1). Then, when

the message is received by the receiving mode, the nine

message bytes are added to the CHECKSUM byte . . . .”

Id. col. 18 ll. 26–30. As the specification acknowledges,

the disclosed CHECKSUM is a primitive, coarse verifica-

tion filter. Id. col. 18 ll. 25, 33 (“simple routine”). It sums

up nine bytes each with eight bits. If any two bytes

contain opposite and inaccurate data in the same bit, the

CHECKSUM may not catch the error. For example, if

data field 1 contains a 1 in the first bit (but should have

contained a 0) and data field 2 contains a 0 in the first bit

(but should have contained a 1), the CHECKSUM would

add these up and conclude that the message was properly

sent even though two fields had errors. The specification

acknowledges that errors could also occur in the scenario

the message sent begins with zeros. Id. col. 18 ll. 33–35.

If, therefore, the “message validation information” is

required to accurately validate that the message sent is

exactly bit-by-bit the same as the message received 100%

of the time, then the only disclosed embodiment, the

simple CHECKSUM, might not be covered by the claim

language. A construction that would exclude the pre-

ferred embodiment “is rarely, if ever, correct and would

require highly persuasive evidentiary support.” Vitronics

Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir.

1996). That, however, is not the case here. The patent-

ee’s own disclosure contemplates an acceptable rate of

error in the verification process in which the CHECKSUM

embodiment can often, but not always, verify the message

was received exactly as sent. Thus, the claimed valida-

tion need not be flawless to meet the claimed message

validation information limitation—an issue to be resolved

in an infringement analysis.

HILL-ROM SERVICES, INC. v. STRYKER CORPORATION 19

As such, we construe “message validation infor-

mation” as one or more data fields within a message that

is used to verify that the message was received exactly

the same as it was sent.

D. “bed condition message”

The district court construed “bed condition message”

as “a message not generated in response to any user

request that contains the status of all conditions the bed

is capable of monitoring.” District Court Decision at *12.

As an initial matter, there is nothing in the plain and

ordinary meaning of “bed condition message” that would

require either that the message not be generated by a

user request or that the message is required to contain

the status of all conditions (and cannot be a subset of the

data). The plain and ordinary meaning of “bed condition

message” is a message that indicates the status of a

monitored bed. There is no lexicography or disavowal

that has been argued to support the additional limitations

the court imposed. There is no mention in the specifica-

tion of the “bed condition message” including all status

conditions. Likewise, there is no discussion of user re-

quests. The specification does disclose an embodiment

that periodically polls: “In a preferred embodiment . . . the

bed interface board 35 polls every 250 millisec-

onds . . . [a]t each poll, a message is sent.” See ’038 patent

col 13 ll. 39–col. 14 ll. 13. This disclosure of periodic

polling in one embodiment does not justify reading period-

ic polling into the claim. There is no argument that one of

skill in the art would read this specification or its associ-

ated prosecution history as incorporating these limita-

tions.

The court’s construction was based entirely upon its

conclusion that judicial estoppel prevented Hill-Rom from

any broader construction. The district court explained

that there are three factors that ought to be considered in

determining whether to apply judicial estoppel: 1) a

20 HILL-ROM SERVICES, INC. v. STRYKER CORPORATION

party’s position must be clearly inconsistent with an

earlier position taken; 2) the party must have prevailed

on the basis of the earlier position; and, 3) the party

asserting the inconsistent position would derive an unfair

advantage or impose an unfair detriment on the opposing

party if not estopped. District Court Decision at *11. The

court concluded that all three factors in this case weighed

in favor of applying judicial estoppel.

In this case, during prosecution of a later, unrelated

patent, U.S. Patent No. 8,121,856 (’856 patent), the

examiner rejected claims as obvious over three references.

One of the prior art references cited was U.S. Patent

Application Publication No. 2002/0151990 (the Ulrich

reference), which has the same specification as the ’038

patent. Hill-Rom argued that the examiner “relies on

Ulrich as teaching” “transmissions of subsets of data of

features of a bed frame and air mattress.” J.A. 390. In

response, Hill-Rom added a limitation that the monitoring

device receives a user request for a specific subset of data

and that the specific subset of data be transmitted with-

out transmitting the other available data. Hill-Rom

argued that adding this limitation overcame the obvious-

ness rejection because this added limitation was not

disclosed in the Ulrich reference:

Neither Sievenpiper nor Haller nor Ulrich have

any disclosure of a monitoring device from which

such a user request can be made for subsets of da-

ta and those subsets of data are transmitted with-

out transmitting other subsets of available data.

The undersigned is quite familiar with the Ulrich

reference because it is assigned to the assignee as

the present application. In Ulrich’s systems, us-

er[s] cannot request specific subsets of data be

transmitted without transmitting other available

data subsets. The data transmissions in Ulrich’s

system happen in response to periodic pro-

HILL-ROM SERVICES, INC. v. STRYKER CORPORATION 21

grammed polling by individual electronic devices

of the system, not in response to any user request.

J.A. 391. Based on this statement, the district court

found judicial estoppel was warranted and that “bed

condition message” should be limited to “a message not

generated in response to any user request that contains

the status of all conditions the bed is capable of monitor-

ing.” District Court Decision at *12.

We conclude that there are several errors in this

analysis. As an initial matter, we decided this issue in

Pfizer, Inc. v. Ranbaxy Laboratories, Inc., 457 F.3d 1284,

1290 (Fed. Cir. 2006), and are bound to follow Pfizer. In

Pfizer, claim 1 of the patent at issue (the ’893 patent) was

directed to a particular compound and depicted the

R-trans isomer. The patentee argued that claim 1 covered

the R-trans isomer by itself and was not limited to a

mixture of isomers. The defendant argued that prosecu-

tion history estoppel or, alternatively, judicial estoppel

should bar the patentee from advancing this construction

because, during the prosecution of the unrelated ’995

patent, the patentee repeatedly stated that the ’893

patent was not directed to isolated enantiomers but

rather was limited to a mixture of enantiomers. The

defendant argued that the ’893 claims should thus be

limited to mixtures, and should not cover the isolated

R-trans isomer. We held that “statements made during

prosecution of the later, unrelated ’995 patent cannot be

used to interpret claims of the ’893 patent.” Id. at 1290.

We went on to hold that “insofar as Ranbaxy restates the

same argument under the guise of judicial estoppel, we

are not persuaded.” Id.

If we accept as true Stryker’s argument that Hill-

Rom’s prosecution statements are inconsistent with the

construction of “bed condition message” Hill-Rom now

seeks, there would be no distinction between this case and

Pfizer. Stryker acknowledged as much in its brief. It

22 HILL-ROM SERVICES, INC. v. STRYKER CORPORATION

never argued that Pfizer did not govern this case or was

distinguishable from the present case, but rather that

Pfizer was wrongly decided. Appellee’s Br. at 52–53. We

see no reason to question the rule in Pfizer, and, in any

event, we are bound by prior panel decisions. Barclay v.

United States, 443 F.3d 1368, 1373 (Fed. Cir. 2006).

Thus, statements made during prosecution of a later,

unrelated patent cannot form the basis for judicial estop-

pel.

But there is a second error in the district court’s judi-

cial estoppel analysis. For judicial estoppel to apply, a

parties’ later position must be clearly inconsistent with

the earlier position. New Hampshire v. Maine, 532 U.S.

742, 749 (2001); see also United States v. Christian, 342

F.3d 744, 747 (7th Cir. 2003). Hill-Rom’s current position,

that “bed condition message” should be given its plain and

ordinary meaning, is not clearly inconsistent with its

statements during prosecution of the ’856 patent. None of

the statements Hill-Rom made during the ’856 patent’s

prosecution purport to define “bed condition message.”

Instead, they generally describe the disclosure of the

Ulrich reference or the Ulrich systems. It is undisputed

that the Ulrich reference did not teach “transmissions of

subsets of data features.” The Ulrich reference is com-

pletely silent on this point. Ulrich neither requires all

bed conditions to be transmitted nor explains that a

subset can be transmitted. Acknowledging that Ulrich

does not teach transmitting a subset of bed conditions

therefore is not a clear limitation of claim scope. A patent

is used as prior art in an anticipation or obviousness

rejection for what it discloses. By contrast, the scope of

the claims is not generally limited to the embodiments

disclosed in the patent.

Claim 1 of the ’038 patent requires that the “bed con-

dition message” be transmitted to the processing station

over the datalink. The claim is silent regarding the

trigger for this transmission: whether the transmission

HILL-ROM SERVICES, INC. v. STRYKER CORPORATION 23

occurs in response to user request or is automatic. The

specification gives one example of periodic polling, but

does not suggest that the inventor intended this embodi-

ment to limit the invention claimed. Thus, claim 1 covers

transmission of the bed condition message regardless of

whether the transmission occurs in response to a user

request or periodically at some timed interval. That does

not mean that the ’038 patent discloses or teaches user

requests; it undisputedly does not disclose an embodiment

where the data is transmitted in response to a user re-

quest. Accordingly, we do not agree that the statements

made during the unrelated patent’s prosecution are

clearly inconsistent with the position Hill-Rom takes

regarding the meaning of “bed condition message.”

Finally, the statement about the Ulrich reference is

itself confusing and self-contradictory. Hill-Rom stated

that “[t]he data transmissions in Ulrich’s system happen

in response to periodic programmed polling . . . not in

response to any user request,” J.A. 391, suggesting that

data is not transmitted in response to a user request. The

previous sentence, however, stated that “[i]n Ulrich’s

systems user[s] cannot request specific subsets of data be

transmitted without transmitting other available data

subsets,” id., suggesting that data can be transmitted in

response to a user request, but that when a user requests

data, all available data is transmitted. These statements

are internally inconsistent, and thus Hill-Rom’s current

argument regarding claim scope is not “clearly incon-

sistent” with them. We conclude that these facts do not

present a case for application of the doctrine of judicial

estoppel.

We hold that that a “bed condition message” is a mes-

sage that indicates the status of a monitored bed condi-

tion. The parties do not dispute that this is the plain and

ordinary meaning of the term. And the specification

provides us with no reason to depart from the plain and

ordinary meaning.

24 HILL-ROM SERVICES, INC. v. STRYKER CORPORATION

CONCLUSION

We reverse the district court’s grant of summary

judgment of non-infringement and remand for further

proceedings in view of this opinion.

REVERSED AND REMANDED

United States Court of Appeals

for the Federal Circuit

______________________

HILL-ROM SERVICES, INC., HILL-ROM

COMPANY, INC., AND HILL-ROM

MANUFACTURING, INC.,

Plaintiffs-Appellants,

v.

STRYKER CORPORATION (doing business as

Stryker Medical) AND STRYKER SALES

CORPORATION,

Defendants-Appellees.

______________________

2013-1450

______________________

Appeal from the United States District Court for the

Southern District of Indiana in No. 11-CV-1120, Judge

Jane Magnus-Stinson.

______________________

REYNA, Circuit Judge, dissenting.

I dissent for three reasons. First, the intrinsic record

is devoid of any description of a wireless “datalink” struc-

ture. Second, credible extrinsic evidence belies the major-

ity’s conclusion that “datalink” encompasses wireless

communications. Third, the majority relies on expert

testimony that is conclusory and unreliable.

Despite these determinative criteria, the majority

construes “datalink” as covering any way of communi-

2 HILL-ROM SERVICES, INC. v. STRYKER CORPORATION

cating data, including wireless structures. This construc-

tion literally encompasses all data communication tech-

nology regardless of whether it existed in 1993 when the

patents were filed, whether it was created yesterday, or

whether it shall be created in the future. Neither the

record before us nor our case law supports such a con-

struction. Because I will not extend the literal scope of

the patent beyond what is clearly claimed, I respectfully

dissent.

I.

The claim language demonstrates that “datalink” is a

meaningful structural limitation. The asserted claims are

system claims. They recite that messages are sent “over

a/the datalink,” “by a/the datalink,” and “via a/the data-

link.” They also indicate that the “datalink” is the struc-

ture used to “couple” or “communicatively couple” the

remote station and the interface board on the bed. This is

clearly indicated by the recited claim language: “cou-

pled . . . by a datalink” and “communicatively cou-

pled . . . by a datalink.” See ’038 patent claim 13; ’659

patent claim 13. Thus, the context in which the “data-

link” limitation is recited indicates that “datalink” must

be more precise than anything that would “couple” or

“communicatively couple” the interface board and the

remote station.

Further, the written description does not describe

“datalink” as any way of communicating data. To the

contrary, the written description emphasizes that a

“datalink” is physical structure. First, the written de-

scription consistently refers to a “datalink” as a “serial

datalink.” See, e.g., ’038 patent col. 20 ll. 27-41. Second,

as the majority recognizes, the written description uses

“datalink” in a manner synonymous with a cable, which is

a physical structure. See, e.g., ’038 patent col. 6 ll. 30-31,

47. This is consistent with the sole depiction of a datalink

in figure 1 as a physical cable connecting the interface

HILL-ROM SERVICES, INC. v. STRYKER CORPORATION 3

board to the wall interface unit. Id. fig. 1, col. 6 ll. 29-33.

Finally, the patent teaches that the “datalink” serves to

“electrically couple” components of the system. See id.

abstract, col. 6 l. 49. Such an electrical coupling would be

impossible without a medium for carrying the electrical

signals.

The recitations in other, non-asserted claims further

indicate that the patent’s “datalink” must be a physical

structure. Claim 12 expressly requires the “datalink” to

be “in line” with an “optical isolator electrically connected

between said interface board and said processing station.”

Id. col. 23 ll. 43-47. The only way the “datalink” could

also connect the interface board and processing station

while being “in line” with the electrically connected “opti-

cal isolator” is if it is a physical structure. See Phillips v.

AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en

banc), cert. denied, 546 U.S. 1170, 126 S. Ct. 1332 (2006)

(“the usage of a term in one claim can often illuminate the

meaning of the same term in other claims”) (citation

omitted).

Put simply, everything within the intrinsic record

identifies the claimed “datalink” as a physical structure.

There is nothing in the claims, written description, or file

history that indicates the claimed “datalink” embraced

wireless communications.

II.

In addition to clear intrinsic evidence, the majority al-

so disregards credible extrinsic evidence regarding the

understanding of “datalink” in the context of the patents-

in-suit. Specifically, the majority ignores that in 2007,

fourteen years after the filing date of the patents-in-suit,

Hill-Rom filed Patent Application No. 11/672,367 (“the

’367 application”), which was expressly directed to wire-

less bed connections. See J.A. 344. As originally filed, the

only material difference between claim 1 of the ’367

application and the inventions disclosed and claimed in

4 HILL-ROM SERVICES, INC. v. STRYKER CORPORATION

the patents-in-suit was the explicit use of wireless com-

munication technology:

1. A hospital bed having wireless communication

circuitry operable to transmit bed status data

wirelessly to a network and to receive messag-

es wirelessly from the network, the bed having

a mattress associated therewith and the bed

status data including information regarding at

least one feature of the mattress.

J.A. 348-49. The ’367 application did not claim priority to

any of the patents-in-suit. The application further char-

acterized the patents-in-suit as “Background of the Inven-

tion,” J.A. 345 ([0003]), and described these background

systems as limited to wired systems:

Hospital beds that connect to nurse call systems,

typically do so via a wired connection established

by a nurse call cable that extends between the bed

and an interface unit having a jack mounted on a

wall or headwall unit in the hospital room in

which the bed is situated.

J.A. 345 ([0004]) (emphasis added). Then, in the “Sum-

mary of the Invention,” the ’367 application contrasted

itself against the prior art through the use of wireless

connectivity. E.g., J.A. 345 ([0006]). The ’367 application

expressly differentiated itself from the patents-in-suit in

this exact manner by asserting that “according to this

disclosure, the standard bed status data is transmitted

wirelessly.” J.A. 346 ([0052]). The only reasonable con-

clusion that can be drawn from the filing of the ’367

application, now patented, is that Hill-Rom itself—

presumably one of ordinary skill in the art—both recog-

nized and understood the earlier patents-in-suit as lack-

ing a wireless datalink.

Additionally, in 2011, a patent examiner reviewing

the patentability of Hill-Rom’s wireless bed patent con-

HILL-ROM SERVICES, INC. v. STRYKER CORPORATION 5

cluded that the patents-in-suit do not themselves embrace

wireless “datalinks.” The examiner stated that the pa-

tents-in-suit do “not teach” either “a first transmitter that

transmits the first ID wirelessly” or “the bed having a

wireless receiver and a second transmitter.” J.A. 354.

The examiner further concluded that it was necessary to

combine the patents-in-suit with another reference that

expressly taught “wireless transmission between a wire-

less unit associated with a bed, and a remote unit” in

order to achieve an overall, combined system that includ-

ed “wireless communication capabilities.” J.A. 355. The

examiner’s remarks do not, as the majority contends,

simply confirm that the patents do “not teach . . . the bed

having a wireless receiver.” Maj. Op. at 8. Rather, the

examiner understood that the patents-in-suit did not

include wireless communications, which necessarily

means that he did not consider the “datalink” disclosed in

the patents-in-suit to reach such wireless technology. The

majority fails to acknowledge the full scope of the exam-

iner’s statements, which were made by an uninterested

party outside the scope of the present litigation, a materi-

al element in the analysis of the evidentiary record.

III.

Despite the limited scope of the intrinsic and extrinsic

record, the majority construes “datalink” as “any link over

which data is transferred and can be wired or wireless.” 1

1 The phrase “can be wired or wireless” is permis-

sive and renders itself superfluous. It therefore does not

meaningfully add to the majority’s construction. On

remand, the full scope of “any link over which data is

transferred” must be considered in evaluating both in-

fringement and invalidity. See Source Search Techs., LLC

v. LendingTree, LLC, 588 F.3d 1063, 1075 (Fed. Cir. 2009)

(“‘[i]t is axiomatic that claims are construed the same way

for both invalidity and infringement’”) (quoting Amgen

6 HILL-ROM SERVICES, INC. v. STRYKER CORPORATION

Maj. Op. at 10. This construction reaches any and every

method of communicating data, which is an expansive

functional interpretation—defining the “datalink” struc-

ture by what it does rather than what it is. This func-

tional claiming is not only prohibited outside of the

context allowed by 35 U.S.C. § 112(f), but is also not

supported by the record.

The majority justifies the construction by relying on a

single piece of evidence created solely for Hill-Rom’s use

in the present litigation. In doing so, the majority states:

Indeed, the only evidence in the record of how one

of ordinary skill in the art at the time of filing

would understand the term “datalink” is from

Hill-Rom’s expert. He testified that as of the ef-

fective filing date of the patents-in-suit, “a person

of ordinary skill would understand that ‘datalink’

does not refer solely to physical connection” and

“can be established over wired, wireless, optical,

or other connection.” J.A. 454, 472.

Maj. Op. at 8-9. This testimony from Hill-Rom’s expert,

however, does not directly speak to the meaning of the

term in 1993 and, at best, is ambiguous on the issue

before us.

Importantly, the expert report never expressly states

that one of ordinary skill in the art in 1993 would under-

stand that a “datalink” encompassed wireless connections.

We have long recognized that, although the understand-

ing of a claim term can evolve over time, the literal scope

of a patent claim “cannot have different meanings at

different times.” PC Connector Solutions LLC v.

SmartDisk Corp., 406 F.3d 1359, 1363 (Fed. Cir. 2005).

The literal scope of a claim is fixed by the meaning of its

Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1330

(Fed. Cir. 2003)).

HILL-ROM SERVICES, INC. v. STRYKER CORPORATION 7

terms in the relevant art as of the effective filing date of

the application. Phillips, 415 F.3d at 1313 Cir. 2005)

(“We have made clear . . . that the ordinary and custom-

ary meaning of a claim term is the meaning that the term

would have to a person of ordinary skill in the art in

question at the time of the invention, i.e., as of the effec-

tive filing date of the patent application.”). Here, the

patents-in-suit claim priority to an application filed in

1993 and, a proper construction of the claims must be

tethered to that date.

Hill-Rom’s expert, however, testified before the dis-

trict court that “datalink” needed no construction and

provided explanations that were each phrased in the

present tense. J.A. 471-72. Specifically, the expert testi-

fied:

Datalinks are used by network designers to trans-

fer data from one device to another. Thus, a “dat-

alink” is used in many different fields and

applications, and is not confined solely to the con-

nection to a hospital bed. A person of ordinary

skill in the art would understand that a datalink

can be used in an unlimited number of contexts

where digital data is to be transmitted.

Id. (emphases added); see also id. at 472 (“would under-

stand that ‘datalink’ does not refer solely to physical

connection” and “a datalink can be established over wired,

wireless, optical or other connection”) (emphases added).

In view of Hill-Rom’s bare attempt to embrace wireless

communications under the purported plain meaning of

the term “datalink,” the expert testimony does not

demonstrate a temporal connection to 1993, as it must.

Beyond ambiguity, the expert’s testimony is also con-

clusory. There is no documentary evidence—dictionary

definition, paper, article, advertisement, product, system,

method, etc.—to support his testimony. As such, the

reasoning set forth in SkinMedica, Inc. v. Histogen Inc.,

8 HILL-ROM SERVICES, INC. v. STRYKER CORPORATION

727 F.3d 1187 (Fed. Cir. 2013) is applicable to this case.

There we recognized that the evidentiary value of conclu-

sory expert testimony in the context of claim construction

is suspect and unhelpful:

Expert testimony, in particular, is less reliable be-

cause it “is generated at the time of and for the

purpose of litigation and thus can suffer from bias

that is not present in intrinsic evidence.” For that

reason, “conclusory, unsupported assertions by

experts as to the definition of a claim term are not

useful to a court.”

* * *

In whole, [the expert’s] opinions are unhelpful to

our analysis here. They are conclusory and in-

complete; they lack any substantive explanation

tied to the intrinsic record; and they appear to

conflict with the plain language of the written de-

scription. Without a more detailed explanation of

how [the expert] formed his conclusions and why

they conflict with the plain language of the speci-

fication, we must agree with the district court that

[the expert’s] testimony deserves no weight.

Id. at 1195, 1210 (citations omitted).

In sum, the record before us does not clearly establish

that the claims of the asserted patents encompass wire-

less datalinks. Where there is no support in the intrinsic

record for a proffered construction, a party seeking a

purported “plain meaning” construction that is broader

than what is supported by the intrinsic record must

supply credible extrinsic evidence that sufficiently

demonstrates the subject matter embraced by the “plain

meaning” was known to one of ordinary skill in the rele-

vant art at the time the patent was filed. Hill-Rom has

not made such a showing here.

HILL-ROM SERVICES, INC. v. STRYKER CORPORATION 9

The majority’s conclusion to the contrary is out-

weighed by reliable record evidence that the majority

either miscomprehends or ignores. Under these circum-

stances, the asserted term is properly limited to a physi-

cal connection. Moreover, limiting the claimed “datalink”

to a physical connection is entirely consistent with Hill-

Rom’s claim differentiation arguments, as a physical

connection encompasses, but is not limited to, a wired

datalink.

For the foregoing reasons, I respectfully dissent.