Appeal No. 2005-1431
Application 09/442,070
Subsequent to the filing of the Supplemental Reply, the Federal Circuit addressed the
requirements for an incorporation by reference in Cook Biotech, Inc. v. ACell, Inc., 460 F.3d
1365, 79 USPQ2d 1865 (Fed. Cir. 2006). Cook Biotech was an appeal from the district court's
denial of post-trial motions pertaining to claim construction, infringement, and the adequacy of
the jury verdict form subsequent to a jury finding that ACell, Inc.'s ("ACell's") commercial
product, ACellVetTM, infringed U.S. Patent 5,554,389 ("the '389 patent"). One of the questions
before the Federal Circuit was whether ACell was correct to argue that the claim language "the
luminal portion of the tunica mucosa" should be given the definition it has in Patent No.
4,902,508 ("the '508 patent"), which is the subject of the following incorporation-by-reference
passage in the '389 patent:
The preparation of UBS from a segment of urinary bladder is
similar to the procedure for preparing intestinal submucosa detailed in
U.S. Pat. No. 4,902,508, the disclosure of which is expressly incorporated
herein by reference. A segment of urinary bladder tissue is first subjected
to abrasion using a longitudinal wiping motion to remove both the outer
layers (particularly the abluminal smooth muscle layers) and the luminal
portions of the tunica mucosa layers--the epithelial layers). The resulting
submucosa tissue has a thickness of about 80 micrometers, and consists
primarily (greater than 98%) of a cellular, eosinophilic staining (H&E
stain) extracellular matrix material. Occasional blood vessels and spindle
cells consistent with fibrocytes are scattered randomly throughout the
tissue. . . .
district court correctly held that structure supporting a means-plus-function claim under § 112,
¶ 6 must appear in the specification," id. at 1381, 53 USPQ2d at 1229, which the Federal Circuit
construed for § 112, ¶ 6 purposes as not including subject matter incorporated by reference into
the specification. Id. at 1382, 53 USPQ2d at 1230-31.
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