NOTE: This disposition is nonprecedential.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NOTE: This disposition is nonprecedential.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 off2008-1416 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-leversteeth 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 abovedescribed 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 meansplus-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
2008-1416 16

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.