## United States Court of Appeals for the Federal Circuit

05-1172

NORIAN CORPORATION, Plaintiff-Appellant,

v.

STRYKER CORPORATION, Defendant-Appellee.

Brian M. Poissant , Jones Day, of New York, Ne w York, argued for plaintiffappellant. With him on the brief were Daniel L. Malone and Eric C. Stops

. Gregory J. Vogler , McAndrews, Held & Malloy, Ltd ., of Chicago, Illinois, argued for defendant-appellee. With him on the brief were Timothy J. Malloy , Sandra A. Frantzen , and John L. Abramic

. Appealed from: United States District Cour t for the Northern District of California Judge William H. Alsup

## United States Court of Appeals for the Federal Circuit

05-1172 NORIAN CORPORATION, Plaintiff-Appellant,

v. STRYKER CORPORATION, Defendant-Appellee.

___________________________ DECIDED: December 6, 2005

___________________________ Before NEWMAN, RADER, and BRYSON, Circuit Judges

. BRYSON, Circuit Judge

. This patent case comes before us for a second time. On the first appeal, we reversed the district court’s grant of su mmary judgment of noninfringement, which we held was based on an unduly restrictive claim construction. Norian Corp. v. Stryker Corp. , 363 F.3d 1321 (Fed. Cir. 2004). On remand, the district court again entered summary judgment of noninfringement based on its construction of a different claim limitation. Norian Corp. v. Stryker Corp. , C.A. No. 01-00016 (WHA) (N.D. Cal. Dec. 3, 2004). We affirm.05-1172 2 I The patent in suit, U.S. Pat. No. 6,002,065 (“the ’065 patent”), is owned by appellant Norian Corporation. As the district court explaine d, the patent is directed to kits “for preparing rapidly setting calcium phosphate compositions to be used as ‘bone cements’ in medical or dental procedures.” The asserted cl aims of the ’065 patent are claims 8-10. Claim 8 provides as follows: A kit for preparing a calcium phosphate mineral, said kit consisting of: at least one calcium source and at least one phosphoric acid source free of uncombined water as dry ingredients; and a solution consisting of wate r and a sodium phosphate, where the concentration of said sodium phosphate in said water ranges from 0.01 to 2.0 M and said solution has a pH in the range of about 6 to 11. Dependent claim 9 recites the kit of cl aim 8 wherein the sodium phosphate is present in the water at a concentration r anging from about 0.05 to 0.5 M. Dependent claim 10 recites the kit of cl aim 8 wherein the solution has a pH in the range from about 7 to 9. The issue before the distri ct court was very narrow. It was undisputed that the accused kit sold by Stryker consisted of a vial of powdered material containing sources of calcium and phosphoric acid, a spatula, and a syringe filled with a 0.25 M sodium phosphate solution. The solution was made from two different sodium phosphates: monobasic sodium phosphate monohydrat e and dibasic sodium phosphate heptahydrate. The question posed to the district court was whether Stryker’s sodium phosphate solution was “a solution consisting of water and a sodium phosphate” within the meaning of that portion of claim 8. That question turned on w hether the district court construed the claim term “a sodium phosphate” to include a solution prepared from one or more sodium phosphates, or w hether the term was limited to a solution05-1172 3 prepared from only a single sodium phosphate. The district court concluded that the claim term required that the solution be m ade from only a single sodium phosphate. Because it was undisputed t hat Stryker’s solution was made from more than one sodium phosphate, the court ru led that Stryker’s solution did not infringe Norian’s patent. Norian appeals, contending that the dist rict court’s claim construction was too narrow, and that the term “solution consisti ng of water and a sodium phosphate” should be construed to include solutions made from multiple sodium phosphates and should not be limited to solutions made fr om only a single sodium phosphate. II It is undisputed that there are multiple types of sodium phosphates. The ’065 patent refers to several of them: monobas ic sodium phosphate, which contains one sodium atom, two hydrogen atoms, and one phosphate group; dibasic sodium phosphate, which contains two sodium at oms, one hydrogen atom , and one phosphate group; and trisodium phosphate, which cont ains three sodium atoms and one phosphate group. Each of t he sodium phosphates can be associated with different numbers of water molecules. Norian argues that its claims read on any solution made from a single sodium phosphate as well as any solution made from a combination of different sodium phosphates. The claim term “a sodium phos phate,” according to Norian, should be understood to embrace a mixture of multiple ty pes of sodium phosphates as well as a single sodium phosphate. T hat construction makes sense, according to Norian, because once the various sodium phosphates are put into a water solution, they05-1172 4 dissociate into ions, and the same ions are present in the resulting solution regardless of which type or types of sodium phosphates were used as the starting materials. The district court rejected Norian’s ar gument on several grounds. First, the court noted that the asserted claims use the rest rictive term “consisting of” to define the contents of the claimed solution. In that context, the cour t explained, the term “a” must be interpreted to mean that the solution consis ts of water and only a si ngle solute, i.e., a single type of sodium phosphate, not a mixtur e of different sodium phosphates. The court found support for that interpretation in t he specification, whic h contains repeated references to solutions made from a si ngle sodium phosphate, but contains no reference to making the solution from more than one sodium phosphate. In addition, the court noted that claim 8 uses the phrase “at least one” in the first limitation, which refers to sources of calcium or phosphoric acid, but does not use that phrase in the second limitation, which refers to the ingredients of the solution. The court pointed to the use of the term “a” rather than the phras e “at least one” as indicating that only a single type of sodium phosphate is used in the claimed solution. Finally, the court ruled that the prosecution histor y of the ’065 patent shows t hat the patentee surrendered the claim scope that was encompassed by the phr ase “a sodium phosphate solution” in the predecessor to claim 8 when the patentee amended that language to read “a solution consisting of water and a sodium phosphate.” We agree with the district court’s construction of the claim language. The patent contains multiple references to various diffe rent sodium phosphates. In that context, the reference in the claim to “a sodium phos phate” is most natur ally understood as a reference to one of the different sodium phos phates. As the distri ct court pointed out,05-1172 5 the language used to claim the solution in claim 8 is different from the formulation used in the same claim to describe the source s of calcium and phosphoric acid, where the claim refers to “at least one calcium source and at least one phosphoric acid source.” If the patentee had meant to claim t he use of at least one type of sodium phosphate in the recited solution, it would have been simple to use the same language in the second portion of the claim that was used in the first. Even aside from the departure from the “at least one” phrase used in the first limitation, the word “a” is conspicuous in the phrase “a sodi um phosphate.” Although the word “a” generally means “one or more” in open-ended claims containing the transitional phrase “comprising,” KCJ Corp. v. Kinetic Concepts, Inc. , 223 F.3d 1351, 1356 (Fed. Cir. 2000), that general rule does not apply when the specification or the prosecution history shows that the te rm was used in its singular sense. See, e.g. , Elkay Mfg. Co. v. Ebco Mfg. Co. , 192 F.3d 973, 977-79 (Fed. Cir. 1999) (noting that “our cases emphasize that ‘a’ or ‘an’ can m ean ‘one’ or ‘more than one,’ depending on the context in which the article is used,” and hol ding that the phrase “c omprising . . . an upstanding feed tube” is limit ed to a single such feed t ube based on the prosecution history); AbTox, Inc. v. Exitron Corp. , 122 F.3d 1019, 1023-27 (Fed. Cir. 1997) (limiting the phrase “comprising . . . a metallic gas-c onfining chamber” to a single such chamber based on context gleaned from the specificati on). In particular, this court has interpreted the word “a” in its singular sense when, as in this case, it has been used in conjunction with the closed transit ional phrase “consisting of.” See Abbott Labs. v. Baxter Pharm. Prods., Inc. , 334 F.3d 1274, 1281 (Fed. Cir. 2003) (“[A]lthough ‘a’ without more generally could mean one or more in an open-ended patent claim, ‘a’ with05-1172 6 ‘consisting of’ in this case indicates only one member of a Markush group.”). Thus, the claim language “consisting of . . . a sodium phosphate,” on its ow n, suggests the use of a single sodium phosphate. That interpretation is consistent with the spec ification, as the dist rict court ruled. In particular, example 3 of the specificati on includes a chart listing the different setting times that are associated with di fferent solutions. Each of the listed solutions contains a single solute, which is either a type of sodi um phosphate or a type of sodium carbonate. While the scope of a claim is not necessarily limited to the examples disclosed in the specification, nothing in the ’065 patent specification points away from the district court’s construction limiting claim 8 to single-solute solutions. Rather, each of the solutions described in the specification uses only a si ngle solute, and the specification makes no reference to using a mixture of multiple solutes in a single solution. Norian has argued that the spec ification contains references to solutions made from multiple types of s odium phosphates. In reissue proceedings before the Patent and Trademark Office, Norian argued that exampl e 3 mentions a solution made from a mixture of trisodium phosphate dodecahy drate and dibasic sodium phosphate heptahydrate. ’065 patent col. 10, ll. 46-50. However, as the PTO pointed out, that solution is not the solution recited in claim 8, but instead is a “colloid control” used in connection with the claimed solutions described in example 3. Norian also argues that example 2 supports its claim construction th rough its reference to “Sigma Diagnostics 1.0 M Phosphate Buffer,” an “off the shelf” buffer solution. ’065 patent, col. 9, ll. 52-59. Norian contends that off-the-shelf buffer solu tions are made from mi xtures of multiple types of sodium phosphates. However, the tr ial court concluded based on the evidence05-1172 7 of record that Sigma’s phosphate buffer solution was made from potassium phosphates,
not sodium phosphates, and that the use of the te rm “phosphate buffer” does not imply that the buffer solution was m ade from multiple forms of sodium phosphates, or even any sodium phosphates at all. Thus, now here in the specification does the patentee refer, either explicitly or implicitly, to making the claimed solution from a mixture of multiple sodium phosphates. The district court was also correct to rely on the prosecution history, which reflects a series of patentability reje ctions, followed by narrowing amendments and clarifying explanations from t he prosecuting attorney. T he prosecution history shows that through the series of amendments, Norian surrendered si gnificant scope for what became claim 8. In response to one series of rejections, Norian narrowed the claim by changing the transitional phrase in the claim’s preamble from “compris ing” to “consisting essentially of” and then ultimately to “consisti ng of.” In response to another rejection, Norian amended the critical claim language by replacing the words “a sodium phosphate solution” with the words “a solu tion consisting of water and a sodium phosphate.” The prosecuting attorney adv ised the examiner that the amendment “limit[ed] the claimed kit to one in which the solution is made of water and a single solute , where the solute is either a sodium phosphate or a sodium carbonate, which solute is completely dissolved in the water” (emphasis added). If there were any doubt that the reference to “a sodium phosphate” meant a single type of sodium phosphate, the prosecuting attorney di rected the examiner to the specification’s tables for ex amples of the single-solute solutions to which the amended claim was limited. As the prosecuting attor ney noted, the tables disclose “solutions of05-1172 8 different sodium phosphates”: one solu tion is made from monobasic sodium phosphate, another from dibas ic sodium phosphate, and a third from trisodium phosphate. But none of the solu tions is made from a mixt ure of different sodium phosphates. In other words, the specification contemplates the use of various forms of sodium phosphate, but used indi vidually, not simultaneously in the same solution. As the prosecuting attorney explained, the clai m was limited “with the incorporation of the additional limitation limiting the solution to one that consists of water and a sodium phosphate.” Other references in the prosecution hi story underscore the re strictive scope that was accorded to the claim language. Thus, the prosecuting attorney explained that “the solution is limited to one that is made of water and a solute selected from a sodium phosphate or sodium carbonate,” and that “the claimed kits of the present application are limited to kits in which the setting liquid is a solution of water and a solute, where the solute is either a sodium phos phate or a sodium carbonate.” The district court properly construed that language to limit t he scope of the claim at issue in this case to a single solute in the water solution, i.e., to a single type of sodium phosphate. Norian makes essentially three arguments in response to the district court’s claim construction. First, Norian argues that after any sodium phosphate salt goes into solution, it does not maintain its solid, compound form, and thus it ceases to be identifiable as, for example, monobasic s odium phosphate monohydrate or dibasic sodium phosphate heptahydrate. Instead, it dissolves into dissociated sodium ions and phosphate ions in water. Therefore, accordi ng to Norian, the reference to “a sodium phosphate” in a water solution can only mean a solution containing sodium ions and05-1172 9 phosphate ions, which solution will be produced w hen any one or more types of sodium phosphates are added to water. The problem with that argum ent is that it runs af oul of the language and the prosecution history of the ’065 patent. In the claim language, the specification, and the prosecution history, the pat entee described the claimed solution by reference to the substances used to make it—solutes that incl ude a variety of different types of sodium phosphates. The patentee could have chosen to claim the solution as “a sodium phosphate solution,” as was recited in an earlier version of the claims, or as a solution consisting of “at least one sodium phosphat e,” which would have tracked the language used in the first limitation of claim 8. Instead, the patent ee departed from those formulations and chose to recite a solu tion consisting of water and “a sodium phosphate.” In context, that language denotes a solution made from water and a single solute drawn from among the various types of sodium phosphates. Norian’s second argument is that the prosecution history cannot be read as broadly as the district court read it. Norian explains that the amendment in question (i.e., amending the language from “a sodium phosphate solution” to “a solution consisting of water and a sodium phosphate”) was made in response to a prior art patent to Iwamoto, which discl osed a colloidal setting solution, rather than a pure solution containing no suspended particles. Because the sole purpose of the amendment was to avoid the effect of t he Iwamoto reference, Norian argues, the prosecution history should not be interpret ed as disclaiming pure solutions that are made from more than a single solute.05-1172 10 The problem with that argument is that there is no princi ple of patent law that the scope of a surrender of subject matter during pr osecution is limited to what is absolutely necessary to avoid a prior art reference that was the basis for an examiner’s rejection. To the contrary, it frequently happens t hat patentees surrender more through amendment than may have been absolutely necessary to avoid particular prior art. In such cases, we have held the patentees to the scope of what they ultimately claim, and we have not allowed them to assert that cl aims should be interpreted as if they had surrendered only what they had to. See, e.g. , Fantasy Sports Props., Inc. v. Sportsline.com, Inc. , 287 F.3d 1108, 1114-15 (Fed. Cir. 2002) (patentee “cannot now be heard to argue” a broad construction of the term “bonus points” because patentee acquiesced in the examiner’s narrow interpreta tion to distinguish the claims from prior art, even though under the broad construction the invention may have been patentably distinct from the prior art); Elkay Mfg. Co. , 192 F.3d at 979 (patentee relinquished a construction of claim language that could include separate air and liquid feed tubes, because patentee distinguished a prior art re ference by arguing that the reference taught the use of separate li quid and air feed tubes; court found it “irrelevant . . . whether [patentee] had to relinquish an interp retation of the feed tube limitation that could cover more than one flow path for li quid and air”). Here, in the course of amending, the patentee expressl y spoke to the meaning of the amended claim, noting that it was limited to a single solute. We therefore agr ee with the district court that Norian surrendered all sodium phosphate solu tions made from more than a single solute, i.e., a single type of sodium phosphate.05-1172 11 Norian’s third argument is that by defini ng the solution of the asserted claims in terms of the ingredients used to make the so lution, rather than in terms of the ions found in the solution after it was made, the court has improperly converted what was meant to be a product claim into a product- by-process claim, without applying the legal principles applicable to such claims. We disagr ee. All that the district court has done is to conclude that the patentee c haracterized the solution in terms of the components put into it, which the evidence before the court (i ncluding the specification) showed to be a conventional means of describing a solution. Because the patentee chose to describe the solution in that fashion, the claims remained product claims, but their scope was limited to the designated ingredients from which the claimed solution was made. Ultimately, Norian’s arguments distill to the basic contention that a person of skill in the art would understand that any “sodi um phosphate solution” will contain sodium ions and phosphate ions, no matter whether it is made from one type or multiple types of sodium phosphate. While that may be so, it does not change the cl ear effect of the prosecution history, the specif ication, and the claim language. Rheox, Inc. v. Entact, Inc. , 276 F.3d 1319, 1320-21 (Fed. Cir. 2002) ( holding that the term “calcium orthophosphate,” as used in the claim and in light of the pr osecution history, did not cover monocalcium orthophosphate, even t hough a person of skill in the art would recognize that the term generally refers to a family of com pounds that includes monocalcium orthophosphate). Norian did not simply claim a “sodium phosphate solution”; nor did Norian broadly claim a solu tion containing sodium and phosphate ions. Instead, Norian limited the solu tion in claim 8 to one using a single type of sodium phosphate. Although Norian might have claimed the solution more broadly, it did not,05-1172 12 and we are not now free to interpret the clai m in a way that is at odds with the claim language and other intrinsic evidence. Finally, Norian argues that even if the di strict court was correct in its claim construction and literal infringement was not es tablished, the court st ill should not have foreclosed its effort to prove infringement under the doctrine of equi valents. Norian, however, amended the pertinent cl aim language in a way that, as the district court construed it, disclaimed solutions made from multiple types of sodium phosphates. If the district court was correct in that char acterization of the pros ecution history—and we believe that it was—Norian is not entitled to prevail on a doctrine of equivalents theory. Instead, under the doctrine of prosecution history estoppel, a narrowing of claim scope during prosecution creates a presumption that the patentee has surrendered, for purposes of the doctrine of equivalents, a ll subject matter falling between the scope of the original claim and the scope of the claim as amended. See Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co. , 535 U.S. 722, 741 (2002). Norian does not suggest that this case fa lls within one of the exceptions to the rule of prosecution history estoppel set forth by the Supreme Court in Festo

. See Festo , 535 U.S. at 740-41. Instead, Norian’s argument is that Festo is inapplicable altogether because Norian never surrendered the subject ma tter in dispute. As indicated above, we have rejected Norian’s interpretation of the prosecution history, and we have concluded, contrary to Norian’s argument, t hat the patentee disclaimed solutions made from more than one form of sodium phosphate. As such, Festo is applicable to Norian’s argument under the doctrine of equivalents, and in the absence of any suggestion of why the principles of Festo do not bar Norian from recourse to that doctrine to establish05-1172 13 infringement, we hold that Norian cannot av oid summary judgment of noninfringement on that ground. Accordingly, we uphold the di strict court’s judgment in all respects. AFFIRMED

.