So held the Federal Circuit in Nevro Corp. v. Boston Scientific, Appeal Nos. 2018-2220, 2018-2349, Fed. Cir., April 9, 2020, while similarly throwing a lifeline to “parathesia-free” (rejecting BSC’s argument that the claims are indefinite because infringement can only be determined after using the device or performing the method), “means for generating” and “therapy signal”.
The Court cites to a couple of cases in this decision that are almost of more interest to me than the above (but who can’t use another 112 case in their arsenal?). First, the Court cited Geneva Pharm v. GlaxoSmithKline PLC 349 F.3d 1373 (Fed. Cir. 2003) for the proposition that “[t] fact that the same dosage amount does not yield synergy under other circumstances is irrelevant” and does not alone render the term “synergistically effective amount” indefinite.” Second, Hill-Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367 (Fed. Cir. 2014) for “declin[ing] to cull out a single e.g. phrase from a lengthy written description to serve as the exclusive definition” of a claim term. And finally, one I hope I never have to use, but you never know with some examiner’s – Medrad, Inc. v. MRI Devices Corp., 401 F.3d 1313 (Fed. Cir. 2005)(holding that a particular term, even the same term, “need not have the same meaning when used in an entirely separate patent, particular one involving different technology.”)