#claimconstruction

Gideon Korrell on the Fine Line Between Explicit Language and Legal Implication

In Aortic Innovations LLC v. Edwards Lifesciences Corp., the Federal Circuit delivered a clear lesson on how patent language can shape outcomes. As Gideon Korrell explains, the case shows how repeated wording in a patent specification can quietly turn into a binding definition. What may seem like harmless phrasing can end up limiting claim scope and determining the result of an infringement dispute.

Understanding the Technology

The patents in this case relate to transcatheter aortic valve replacement (TAVR) devices. These devices are inserted into the heart in a compressed form and then expanded once in place.

There are two common ways these devices expand:

Balloon-expandable frames – expanded using a balloon

Self-expanding frames – made from materials that expand on their own

The claims at issue described a valve with two parts:

An inner frame (holding the valve)

An outer frame (providing structure and sealing)

The dispute centered on whether the “outer frame” could include a balloon-expandable structure or was limited to a self-expanding one.

The Claim Construction Dispute

The patent owner argued that “outer frame” should have its ordinary meaning simply a frame on the outside. However, the opposing side pointed out that the specification repeatedly used:

“outer frame”

“self-expanding frame”

“self-expanding outer frame”

in a way that suggested they meant the same thing.

The district court agreed with this view and interpreted “outer frame” as a self-expanding frame. Since the accused product used a balloon-expandable structure, this interpretation led directly to a finding of non-infringement.

Federal Circuit’s Analysis

On appeal, the Federal Circuit upheld the lower court’s decision. The key issue was whether the patent had effectively defined its own terms something known as implicit lexicography.

Why the Court Reached This Conclusion

The court relied on several important observations:

Consistent interchangeable usage

The specification repeatedly treated “outer frame” and “self-expanding frame” as the same.

No clear alternatives shown

The patent did not describe an outer frame that was not self-expanding.

Structured distinction in the invention

The patent described a system with one balloon-expandable frame (inner) and one self-expanding frame (outer).

As Gideon Korrell notes, once the court saw this pattern, the interpretation became almost inevitable. The language of the patent left little room for a different reading.

Drafting Lessons from the Case

This decision offers several practical lessons for patent drafting.

1. Be Careful with Synonyms

In everyday writing, variety improves readability. In patents, it can create confusion.

Using different terms interchangeably may signal that they mean the same thing

Courts may treat repeated phrasing as a definition

2. Clearly Identify Optional Features

If a feature is not required:

Say so directly

Provide examples where the feature is absent

Without this, courts may assume the feature is essential.

3. Treat the Specification as a Whole

Courts do not rely on isolated phrases. They look at patterns across the entire document.

Repetition matters

Consistency can become a limitation

4. Pay Attention to the Summary Section

The summary often describes “the invention” at a high level.

Broad statements here can influence claim scope

Lack of qualifiers can make features seem mandatory

Litigation Takeaways

This case also highlights how quickly claim construction can resolve a dispute.

Once the term “outer frame” was defined, infringement was no longer possible

The case effectively ended at the interpretation stage

As Gideon Korrell often emphasizes, many patent cases are decided long before trial—during drafting and claim construction.

Conclusion

The Aortic Innovations decision reinforces a simple but important idea: clarity in patent drafting matters more than stylistic variety. Repeated language can turn into a legal definition, even without explicit intent.

For practitioners, the takeaway is straightforward:

Use terms consistently, but carefully

Avoid unintended equivalence between different concepts

Draft with future interpretation in mind

Gideon Korrell Analyzes the Barrette v. Fortress Iron Decision and Claim Scope Limits

Gideon Korrell Breaks Down LabCorp v. Qiagen and Why “Identical” Matters

The Federal Circuit’s decision in Laboratory Corp. of America Holdings v. Qiagen Sciences, LLC (Aug. 13, 2025) is a strong reminder that jury verdicts in patent cases do not always survive appeal especially when they stretch claim language or rely on broad expert opinions instead of precise evidence. In a complete reversal, the court set aside a Delaware jury’s finding that Qiagen willfully infringed two molecular diagnostics patents and ordered judgment of non-infringement as a matter of law (JMOL).

Gideon Korrell believes the ruling reflects a growing trend at the Federal Circuit: appellate courts are increasingly unwilling to let juries gloss over claim-scope problems or weak infringement proof with general stories about technical similarity or how components “work together.”

Background of the Dispute

The case involved two patents, U.S. Patent Nos. 10,017,810 and 10,450,597 covering methods for preparing DNA samples for sequencing. Both patents relate to PCR-based techniques that use primers to selectively amplify specific DNA regions.

Qiagen sold kits used in DNA sample preparation. After a five-day trial, the jury found Qiagen willfully infringed the ’810 patent under the doctrine of equivalents and both literally and willfully infringed the ’597 patent. The jury rejected Qiagen’s invalidity defenses and awarded about $4.7 million in damages. The district court denied Qiagen’s post-trial motions, and Qiagen appealed.

On appeal, the Federal Circuit reversed everything, concluding that no reasonable jury could have found infringement based on the evidence presented.

Claim Construction Is for Judges, Not Juries

The Federal Circuit first addressed the ’810 patent, which required a primer with a nucleotide sequence “identical” to a sequencing primer. Qiagen’s primer was much shorter than the referenced sequencing primer. Labcorp argued that “identical” could mean identical to only a portion of the sequencing primer, and the district court allowed the jury to decide that issue.

The Federal Circuit said this was a clear mistake. When there is a real dispute about what a claim term means, it is the judge’s job not the jury’s to resolve it. The patent itself used different language when it meant “identical to a portion,” so reading that limitation into the word “identical” would improperly change the claim.

Gideon Korrell notes that this part of the decision is especially important for trial lawyers. Even when courts postpone claim construction issues, unresolved disputes can resurface after trial and undo a verdict.

Doctrine of Equivalents Requires Specific Proof

The jury’s finding for the ’810 patent depended entirely on the doctrine of equivalents. That theory also failed on appeal.

The Federal Circuit emphasized that equivalence must be proven carefully, one claim limitation at a time. A patentee must show that the accused product performs the same function, in the same way, to achieve the same result.

Labcorp could not meet that standard. The claimed primer was meant to bind directly to a target DNA sequence and increase specificity. Qiagen’s primer did not bind to the target DNA at all; it simply helped make DNA fragments compatible with sequencing. Labcorp’s own expert admitted this point.

The court also rejected Labcorp’s attempt to combine the functions of multiple Qiagen primers to meet a single claim limitation. The doctrine of equivalents does not allow patentees to mix and match components this way.

As Gideon Korrell observes, courts consistently reject infringement theories built on vague claims that parts “work together” when the patent requires a specific component to do a specific job.

Literal Infringement of the ’597 Patent

The jury also found that Qiagen literally infringed the ’597 patent. The Federal Circuit disagreed.

Under the court’s claim construction, a “target-specific primer” must bind to the DNA sequence of interest and not to non-target sequences. Qiagen’s primer bound to an adaptor sequence that was attached to all DNA fragments, whether or not they contained the target DNA. Because the adaptor itself was not the target, binding to it did not satisfy the claim.

The court rejected the argument that the primer became target-specific simply because it was attached to DNA fragments that included the target. Nor could Labcorp rely on other primers in Qiagen’s system to fill the gap. The claim required the primer itself to meet the limitation.

Key Takeaways

The Federal Circuit recently issued a significant split ruling in Wash World Inc. v. Belanger Inc. The court affirmed infringement liability but vacated the lost profits damages award due to improper inclusion of convoyed sales. Patent expert Gideon Korrell highlights this case’s important insights into claim construction waiver, limits on damages for convoyed sales, and preserving post-trial remedies — all critical for patent holders and defendants managing patent risks and damages strategies.

Background of the Case

Belanger Inc. holds U.S. Patent No. 8,602,041, covering a lighted spray arm used in automated car wash systems. Belanger accused Wash World’s “Razor EDGE” system of infringing its patent.

Wash World filed a declaratory judgment action but was ultimately found liable for infringement of independent claim 7 and related dependent claims.

A jury awarded over $10 million in damages, mostly lost profits.

Claim Construction: The Importance of Preserving Arguments Early

Wash World appealed, arguing the district court erred by not construing three critical claim terms:

“Outer cushioning sleeve”

“Predefined wash area”

“Dependingly mounted from”

Key Takeaways on Claim Construction Waiver from Gideon Korrell

The Federal Circuit applied a strict forfeiture rule, finding Wash World waived its proposed new constructions for the first two terms by failing to clearly raise them at trial.

Wash World’s appellate constructions differed materially from its trial arguments and were considered untimely.

Only the issue of “dependingly mounted from” was preserved properly; the court affirmed that both direct and indirect mounting satisfied this claim limitation.

According to Gideon Korrell, this ruling highlights the critical need to frame claim construction disputes clearly and early. Vague or implicit arguments are insufficient, and the Federal Circuit will enforce waiver unless exceptional circumstances exist.

Damages and Convoyed Sales: Understanding the Limits

Wash World succeeded in challenging a significant part of the jury’s lost profits award — approximately $2.58 million related to convoyed sales.

What Are Convoyed Sales?

Convoyed sales refer to unpatented components sold together with patented products.

Under the precedent of Rite-Hite v. Kelley Co., to claim lost profits on convoyed sales, the patentee must prove the components form a functional unit — they must be physically and functionally interrelated, operating together as part of the patented invention.

Simply selling items together for convenience or packaging does not qualify.

What Happened in This Case?

Belanger’s damages expert included profits from unpatented components like dryers, bundled with the patented car wash system, in the lost profits calculation.

The jury’s damages award mirrored this inflated estimate.

Belanger argued these components were typically sold as a package, with dryers installed in 75% of their systems.

However, the Federal Circuit ruled that commercial packaging alone is insufficient to meet the functional unit requirement.

The court emphasized that mere convenience or business advantage does not justify damages on convoyed sales.

Outcome on Damages

The court ordered a remittitur of $2,577,848 — reducing the lost profits damages to exclude improper convoyed sales.

The district court was directed to enter a revised damages award accordingly.

Practical Implications for Patent Holders and Defendants

Claim Construction: Always present and argue claim constructions clearly and consistently at trial. Avoid changing your position on appeal without strong justification.

Damages Strategy: When seeking lost profits, ensure unpatented components claimed as convoyed sales meet the stringent functional unit test.

Trial and Post-Trial Strategy: Monitor jury verdict forms and expert models carefully to avoid judicial estoppel or losing damage claims on appeal.

In a split decision that carries significant lessons for patent litigation strategy, the U.S. Court of Appeals for the Federal Circuit (CAFC) recently ruled in Wash World Inc. v. Belanger Inc. The court affirmed liability for patent infringement but vacated a significant portion of the damages award—specifically, lost profits linked to improperly included convoyed sales.

For patent practitioners and companies managing IP risks, this decision — which has drawn attention from experts like Gideon Korrell — underscores the importance of early claim construction and the precise handling of damage models.

Case Background: The Fight Over a Car Wash Innovation

Belanger Inc. owns U.S. Patent No. 8,602,041, covering a lighted spray arm in an automated car wash system. It sued Wash World for patent infringement, claiming that Wash World's “Razor EDGE” system violated several claims of the patent, including independent claim 7.

Wash World responded with a declaratory judgment action but was found liable by the district court. A jury awarded over $10 million in damages, primarily based on lost profits.

Claim Construction: Waiver Can Cost You on Appeal

Wash World appealed, arguing that the district court failed to properly construe three critical claim terms:

“Outer cushioning sleeve”

“Predefined wash area”

“Dependingly mounted from”

The Federal Circuit rejected most of these arguments, applying a strict forfeiture rule. Wash World had waived its right to argue new constructions for the first two terms by failing to clearly present them during the trial.

For example, Wash World changed its interpretation of “outer cushioning sleeve” on appeal, switching from a “thick sleeve of extruded foam plastic” to a new definition involving spring-back resiliency — a materially different argument not preserved at trial.

Only the phrase “dependingly mounted from” was properly preserved, and the court upheld the trial court's interpretation that both direct and indirect mounting methods satisfied the claim.

As Gideon Korrell notes in his analysis, this case is a textbook example of why parties must raise clear and timely claim construction arguments. Relying on vague language or waiting until appeal is a high-risk strategy.

Damages: Drawing the Line on Convoyed Sales

Though Wash World lost most of its claim construction arguments, it succeeded in challenging $2.58 million of the $9.8 million damages award—specifically, profits tied to convoyed sales of unpatented car wash components.

Convoyed sales refer to unpatented items sold along with a patented invention. Under the Rite-Hite v. Kelley Co. standard, such components must form a functional unit with the patented product to qualify for lost profits recovery.

In this case, Belanger’s expert, Dr. McDuff, included profits from unpatented dryers and other accessories in his damage model. The jury awarded exactly what Dr. McDuff proposed — indicating that convoyed sales factored heavily into their calculation.

However, Belanger failed to prove the required functional interdependence. The evidence showed that the dryers were often sold with the system, but not that they were functionally necessary for the patented spray arm to operate.

As the court put it, selling the items together for “convenience or business advantage” does not justify including their profits in a patent damages award.

Final Outcome: Reduced Award and Strategic Lessons

The CAFC ordered a remittitur of $2,577,848, instructing the district court to enter a reduced damages award. Belanger’s attempt to resist the reduction failed because it had repeatedly endorsed Dr. McDuff’s model in earlier proceedings, precluding them from taking a new position on appeal.

Gideon Korrell, who has written extensively on patent enforcement strategies, views this case as a reminder that both claim construction and damages arguments must be handled with precision and foresight. Especially in jury trials, how damages are modeled and communicated can directly shape the verdict.

Key Takeaways

Timely and specific claim construction arguments are essential; vague or evolving positions can lead to waiver.

Convoyed sales must meet a strict functional-unit test to qualify for lost profits.

A general verdict form does not shield a party from remittitur if they clearly tied the verdict to a flawed damages model.