BICON, INC. and DIRO, INC. v. THE STRAUMANN COMPANY and INSTITUT STRAUMANN AG

United States Court of Appeals for the Federal Circuit
05-1168
BICON, INC. and DIRO, INC.,
Plaintiffs-Appellants,
v.
THE STRAUMANN COMPANY
and INSTITUT STRAUMANN AG,
Defendants-Appellees.
Frank P. Porcelli, Fish & Richardson P.C., of Boston, Massachusetts, argued for
plaintiffs-appellants. With him on the brief were Charles Hieken and Thomas A. Brown.
Of counsel were Colter Paulson, Fish & Richardson P.C., of Boston, Massachusetts;
and Berj A. Terzian, of Newbury, Massachusetts.
Milton Sherman, Kaye Scholer LLP, of New York, New York, argued for
defendants-appellees. Of counsel was Stephen J. Elliott.
Appealed from: United States District Court for the District of Massachusetts
Judge George A. O’Toole, Jr.

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United States Court of Appeals for the Federal Circuit
05-1168
BICON, INC., and DIRO, INC.,
Plaintiffs-Appellants,
v.
THE STRAUMANN COMPANY
and INSTITUT STRAUMANN AG,
Defendants-Appellees.
___________________________
DECIDED: March 20, 2006
___________________________
Before MICHEL, Chief Judge, BRYSON, and GAJARSA, Circuit Judges.
BRYSON, Circuit Judge.
This case turns on the construction of a patent that claims an apparatus used
with dental implants. The patent, U.S. Pat. No. 5,749,731 (“the ’731 patent”), describes
a plastic cuff that is designed to preserve a space around a dental implant so that when
a dental crown is placed on top of the implant, the base of the crown can fit beneath the
patient’s gum line.
Diro, Inc., owns the ’731 patent. Joined by its licensee (Bicon, Inc.), Diro sued
The Straumann Company and Institut Straumann AG (collectively, “Straumann”) for
patent infringement based on Straumann’s sale of two devices that are used in the
preparation of crowns for dental implants. The United States District Court for the

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District of Massachusetts granted Straumann’s motion for summary judgment of
noninfringement and dismissed Bicon as a party plaintiff for lack of standing. Bicon, Inc.
v. The Straumann Co., Civil Action No. 01-10269 (D. Mass. Nov. 16, 2004). We affirm.
I
A dental implant prosthesis of the type described by the patent has two separate
parts—the root member or implant, which is implanted in the patient’s jaw bone and
secures the device in place (number 10 in the figure below, which is Fig. 1 of the ’731
patent); and the head member or abutment, which attaches to the root member and
sticks up above the patient’s gum line to provide the structure for attaching a crown
(number 14 in the figure below). See ’731 patent, col. 1, ll. 18-23. The ’731 patent
explains that after the patient’s jaw and mouth heal from the surgery to implant the root
member, the permanent abutment member is mounted on the root member. Because
gum tissue “tends to heal taut to the head of the abutment member so that when the
permanent crown is placed on the abutment member the margin of the crown is not
concealed,” id., col. 2, ll. 6-9, the patent describes using the claimed emergence cuff
(number 30 in the figure below) to keep the gum from closing around the abutment
while the patient’s jaw and mouth continue to heal. When the healing process is
complete, the dentist can remove the cuff and can take advantage of the space left by
the cuff to affix the permanent crown to the abutment at a point beneath the patient’s
gum line. Securing the permanent crown below the gum line has the cosmetic
advantage of preserving the natural look of the patient’s gum line with the crown
installed. Id., col. 2, ll. 5-63; col. 3, ll. 61-64. In addition, use of the cuff enables the

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dentist to bond a temporary crown to the cuff at the time it is placed on the abutment,
while the permanent crown is being prepared. Id., col. 2, ll. 65-67.
In the complaint, Diro and Bicon (collectively, “Diro”) alleged that Straumann had
infringed at least claim 5 of the ’731 patent by manufacturing, using, selling, and offering
to sell products that incorporated the subject matter of the claims. In the course of the
litigation, Diro identified two Straumann products that are used with dental implants as
the allegedly infringing devices.
The first device, called an “impression cap,” is a plastic device that attaches to
the shoulder portion of the root member in Straumann’s system while the dentist is
taking a mold that is used to prepare the crown that is to be fitted on the abutment. The
impression cap is the superstructure that fits over the abutment and the shoulder of the
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root member while the mold for the crown is being taken. The impression cap is
removed as soon as the mold is completed, a process that takes only a few minutes.
The first figure below depicts the Straumann impression cap fitted over the Straumann
abutment and attached to the shoulder of the Straumann root member. The second
figure depicts the Straumann root member with the shoulder and neck portions
designated.
The second device, called a “burnout coping,” is a cone-shaped plastic structure
that is used in fabricating the permanent crown. The burnout coping is never placed in
the patient’s mouth, but instead is used in the laboratory in the process of constructing
the crown. It fits over a device known as the analog, which has the same shape as the
abutment and shoulder portion of the root member in the patient’s mouth. The figure
below depicts the Straumann burnout coping.
Claim 5 of the ’731 patent provides as follows (in reproducing the claim, we have
subdivided it so as to facilitate reference to different portions of the claim):
An emergence cuff member for use in preserving the interdental
papilla during the procedure of placing an abutment on a root member
implanted in the alveolar bone of a patient in which
[a] the abutment has a frusto-spherical basal surface portion and
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[b] a conical surface portion having a selected height extending
therefrom comprising
[c] a generally annular member formed of biocompatible synthetic
plastic having first and second ends,
[d] a bore extending from the first to the second ends,
[e] the bore having a taper generally matching that of the conical
surface portion of the abutment,
[f] the larger end of the bore being at the first end,
[g] the outer surface of the annular member forming a feathered
edge with the bore at the first end of the annular member,
[h] the distance between the first and second ends being less than
the height of the conical surface,
[i] the diameter of the cuff member increasing in the direction going
from the first end to the second end, and
[j] a radially inwardly extending flexible lip formed at the first end of
the cuff member.
After construing the claim, the district court granted summary judgment of
noninfringement to Straumann on several grounds. First, the court concluded that the
lengthy preamble of claim 5 (the portion from the beginning of the claim through part [b])
is an integral part of the claim and limits the claim. The court then held that one of the
limitations in the preamble—an abutment having a frusto-spherical basal surface
portion—is not satisfied by either of the accused devices.
Second, the court held that the Straumann impression cap and burnout coping
do not have the structure recited in part [e] of the claim. With respect to the impression
cap, the court held that the taper of the portion of the cap at issue matches the shoulder
portion of the root member in the Straumann system, not the conical surface of the
abutment. With respect to the burnout coping, the court noted that while the taper of the
upper portion of the internal bore in the Straumann burnout coping generally matches
the taper of the conical outer surface of the Straumann abutment, Diro’s infringement
argument rested on the contention that it was the lower portion of the burnout coping
that constituted the claimed annular member. The taper of the bore in that portion of

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05-1168 6
the burnout coping, the court explained, matches the taper of the shoulder of the root
member, not the taper of the abutment.
Third, the court held that part [h] of the claim does not read on the accused
devices because the distance between the first and second ends of the annular member
in the impression cap and burnout coping is not less than the height of the conical
surface of the abutment. Finally, the court ruled that part [i] of the claim does not read
on the burnout coping, because the burnout coping does not contain any structure
consisting of an annular member with a diameter that is greater at the second end than
at the first.
The court further held that the complaint had to be dismissed as to plaintiff Bicon,
Inc., for lack of standing. Although Bicon claimed to be a licensee of Diro’s patent, the
court held that the evidence proffered in the course of the summary judgment
proceedings did not justify a finding that Bicon had an exclusive license to the patent.
As a mere nonexclusive licensee, the court held, Bicon was not entitled to sue for
infringement of the patent, even as a co-plaintiff with the patent owner, Diro.
II
A
Claim 5 of the ’731 patent is a difficult claim to make sense of. Despite the
claim’s detailed description of and references to an abutment, in Diro’s view the claim is
in no way limited by the abutment. Diro’s argument in support of that construction boils
down to two fundamental contentions. First, Diro points out that the claim recites “[a]n
emergence cuff member,” not a combination consisting of an emergence cuff member
and other features, such as an abutment having certain specific characteristics.

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Second, Diro assigns critical significance to the fact that the abutment’s description is in
the preamble of the claim—the preamble consisting of everything in the claim preceding
the word “comprising,” including what we have labeled as parts [a] and [b]. The
preamble, Diro argues, in no way limits the claim because it merely sets forth the
purpose or use of the emergence cuff. Accordingly, Diro characterizes claim 5 as
encompassing any device having the structure of the annular member recited in the
body of the claim that is capable of cooperating with any abutment.
The problem with Diro’s argument is that, because claim 5 includes a detailed
description of the abutment’s physical characteristics and defines the emergence cuff in
a way that depends on those physical characteristics, the invention that is recited in
claim 5 and described in its supporting specification can only be understood as being
limited by the abutment recited in the claim. Together, the preamble and the body of
the claim contain a detailed description of the features of the abutment used in
connection with the emergence cuff. The preamble states that the abutment has “a
frusto-spherical basal surface portion and a conical surface portion having a selected
height extending therefrom.” The body of the claim states that the internal bore of the
emergence cuff has “a taper generally matching that of the conical surface portion of the
abutment.” The body adds that “the distance between the first and second ends [of the
emergence cuff is] less than the height of the conical surface” of the abutment. For
several reasons, that detailed recitation of the features of the abutment is incompatible
with Diro’s theory that the claim concerns only the features of the emergence cuff and
that the references to the abutment merely describe the intended use of the emergence
cuff.

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First, the requirement that the cooperating abutment have “a frusto-spherical
basal surface portion” would have no meaning if the claim were limited to the structure
of the emergence cuff. Diro argues that the claim requires only that the emergence cuff
“interoperate with an abutment that does contain such an element.” But nothing in
Diro’s argument suggests how the shape of the basal surface portion of the abutment
has any effect on the required structure of the emergence cuff. If there is no such
effect, then under Diro’s proposed claim construction the recited “frusto-spherical basal
surface portion” of the abutment has no role in the claim and thus is entirely
superfluous.
The purpose of a patent claim is to define the precise scope of a claimed
invention, thereby “giv[ing] notice both to the examiner at the U.S. Patent and
Trademark Office during prosecution, and to the public at large, including potential
competitors, after the patent has issued.” Johnson & Johnston Assocs. Inc. v. R.E.
Serv. Co., 285 F.3d 1046, 1052 (Fed. Cir. 2002) (en banc). Allowing a patentee to
argue that physical structures and characteristics specifically described in a claim are
merely superfluous would render the scope of the patent ambiguous, leaving examiners
and the public to guess about which claim language the drafter deems necessary to his
claimed invention and which language is merely superfluous, nonlimiting elaboration.
For that reason, claims are interpreted with an eye toward giving effect to all terms in
the claim. See, e.g., Elekta Instrument S.A. v. O.U.R. Scientific Int’l, Inc., 214 F.3d
1302, 1305, 1307 (Fed. Cir. 2000) (claim language “only within a zone extending
between latitudes 30º-45º” does not read on a device with radiation sources extending
between 14º and 43º because “[a]ny other conclusion renders the reference to 30º

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superfluous”); Unique Concepts, Inc. v. Brown, 939 F.2d 1558, 1563 (Fed. Cir. 1991)
(“When the language of a claim is clear, as here, and a different interpretation would
render meaningless express claim limitations, we do not resort to speculative
interpretation based on claims not granted.”); In re Danly, 263 F.2d 844, 847 (CCPA
1959) (limiting claims to require that the claimed device actually be connected to an
alternating current source because, although the claims “do not positively recite a
source of alternating current as an element of the claims,” any other interpretation would
render certain language in the claims meaningless). If we were to accept Diro’s
arguments, we would be requiring the public to look past the plain language of the
claims and guess whether a detailed description of a structural feature in a claim is
superfluous to the scope of the claimed invention and unnecessary to establish
infringement.
The second problem with Diro’s argument is that if the claim reads on any
hypothetical abutment, limitations [e] and [h] are rendered meaningless. If the claim
limitations include only those elements of the claim that pertain to the structural features
of the emergence cuff, as Diro contends, the requirement that “the distance between the
first and second ends [of the emergence cuff must be] less than the height of the conical
surface” of the abutment would make no sense. Since the abutment, in Diro’s view,
refers to any abutment that could cooperate with the emergence cuff, the height
limitation would never exclude any device. No matter what the distance between the
first and second ends of the emergence cuff in question, an abutment could always be
hypothesized that would have a height greater than that distance. Thus, Diro’s claim
construction would read the height limitation out of the claim altogether.

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Similarly, if the claim is construed to include any hypothetical abutment that could
cooperate with the emergence cuff, the requirement that the bore of the emergence cuff
have a taper “generally matching that of the conical surface portion of the abutment”
would be meaningless. That is because an abutment could always be hypothesized
that would have a taper matching the taper of the bore of any emergence cuff. The
“matching taper” limitation would therefore be reduced to requiring only that the bore of
the emergence cuff have a taper.
In sum, the effect of adopting Diro’s proposed claim construction would be to
read limitations [a], [b], [e], and [h] out of the claim. Not only would that be contrary to
the principle that claim language should not treated as meaningless, but it would be
contrary to the specification, which describes the features of the claimed abutment in
detail, not only in the description of the preferred embodiments, but in the background
and summary of the invention portions of the specification as well. See ’731 patent, col.
1, ll. 43-51 (the abutment “has an upstanding generally tapered, conical exterior surface
with an anti-rotational flat surface portion for mounting the prosthetic crown and a basal
portion having a convex, frusto-spherical exterior surface which extends downwardly
from the tapered portion”); col. 2, ll. 47-53 (tapered bore of the cuff matches that of the
conical surface portion of the abutment, “i.e., a taper generally approximately 7
degrees,” with the feathered edge of the cuff “adapted to serve as a smooth
continuation of the frusto-spherical surface of the basal portion of the abutment”); col. 3,
ll. 44-54 (the abutment “has an upstanding, generally tapered, conical surface . . . with
an anti-rotational flat surface . . . for mounting a prosthetic crown and a basal portion . . .
having a convex, frusto-spherical exterior surface which extends downwardly from the

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tapered portion”); col. 4, ll. 3-14 (referring to the diameter of the frusto-spherical portion
and the taper of the conical surface portion of abutments typically used with the
emergence cuff).
In light of the problems presented by Diro’s proposed construction, we conclude
that the correct construction of claim 5 of the ’731 patent is the one adopted by the
district court, in which the claim is treated as one to an emergence cuff when used in
conjunction with an abutment having the features recited in the claim. Despite the fact
that the claim begins with a reference to the emergence cuff alone, the full text of the
claim, read in the context of the entire patent, indicates that the claimed invention is the
combination of the emergence cuff and the abutment, operating together in the fashion
recited in the claim and described in the specification.
Diro’s second and related argument in support of its proffered construction is that
the abutment’s features are described in the preamble, so the only way to limit claim 5
according to those features is to treat the preamble as limiting the claim. To so limit the
claim, Diro argues, would violate the principles of this court’s decisions governing the
role of preamble language in claim construction. Again, we disagree.
While it is true that preamble language is often treated as nonlimiting in nature, it
is not unusual for this court to treat preamble language as limiting, as it is in this case.
Preamble language that merely states the purpose or intended use of an invention is
generally not treated as limiting the scope of the claim. See Boehringer Ingelheim
Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003); Rowe
v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997). However, we have stated that there is no
“litmus test” for determining whether preamble language is limiting. Catalina Mktg. Int’l,

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Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002). To the contrary, we
have stated that “whether to treat a preamble as a claim limitation is determined on the
facts of each case in light of the claim as a whole and the invention described in the
patent.” Storage Tech. Corp. v. Cisco Sys., Inc., 329 F.3d 823, 831 (Fed. Cir. 2003).
If the body of the claim “sets out the complete invention,” the preamble is not
ordinarily treated as limiting the scope of the claim. Schumer v. Lab. Computer Sys.,
Inc., 308 F.3d 1304, 1310 (Fed. Cir. 2002). However, the preamble is regarded as
limiting if it recites essential structure that is important to the invention or necessary to
give meaning to the claim. NTP, Inc. v. Research In Motion, Ltd., 418 F.3d 1282, 1305-
06 (Fed. Cir. 2005), cert. denied, 74 U.S.L.W. 3421 (U.S. Jan. 23, 2006); SanDisk Corp.
v. Memorex Prods., Inc., 415 F.3d 1278, 1284 n.2 (Fed. Cir. 2005), cert. denied, 126 S.
Ct. 829 (2005). That is, if the claim drafter “chooses to use both the preamble and the
body to define the subject matter of the claimed invention, the invention so defined, and
not some other, is the one the patent protects.” Bell Commc’ns Research, Inc. v.
Vitalink Commc’ns Corp., 55 F.3d 615, 620 (Fed. Cir. 1995) (emphasis in original).
Moreover, when the limitations in the body of the claim “rely upon and derive
antecedent basis from the preamble, then the preamble may act as a necessary
component of the claimed invention.” Eaton Corp. v. Rockwell Int’l Corp., 323 F.3d
1332, 1339 (Fed. Cir. 2003).
We conclude, as did the district court, that the preamble to claim 5 of the ’731
patent recites essential elements of the invention pertaining to the structure of the
abutment that is used with the claimed emergence cuff. First, as we have noted, the
preamble of claim 5 is not limited to stating the purpose or intended use of the invention,

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but contains structural features of the abutment. Moreover, the body of the claim does
not recite the complete invention, but refers back to the features of the abutment
described in the preamble, so that the references to the abutment in the body of the
claim derive their antecedent basis from the preamble. And because the preamble
recites structural features of the abutment, it is apparent that the claim drafter chose to
use both the preamble and the body of the claim to define the subject matter of the
claimed invention. Indeed, as described above, if claim 5 is not limited to the particular
abutment described in the preamble, limitations [e] and [h] of claim 5 become
meaningless.
In arguing that no part of the preamble limits the scope of claim 5, Diro relies on
language from the lead opinion in C.R. Bard, Inc. v. M3 Systems, Inc., 157 F.3d 1340
(Fed. Cir. 1998). The claim that was at issue in that case, however, is quite different
from the claim at issue here. The preamble in Bard described a biopsy needle for use
with a tissue sampling device; the device was described as having a housing with two
slides to permit longitudinal motion. The body of the claim recited a hollow first needle
with a head for coupling the needle to the first slide and a second needle extending
through the first needle and having a head for coupling to the second slide. The opinion
in Bard explained that the preamble merely described the portion of the housing
necessary to define the intended function of the needles that were the subject of the
claim. 157 F.3d at 1350. In this case, by contrast, the preamble recites structure for the
abutment that goes well beyond what is necessary to describe the intended purpose of
the emergence cuff. The recitations of the “frusto-spherical basal surface” of the
abutment and the height of the conical surface of the abutment do not serve to describe

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the function of the emergence cuff, but instead are necessary to define the structure of
the claimed device. Accordingly, the analysis in Bard is not at odds with our conclusion,
and that of the district court, that the preamble incorporates limitations relating to the
abutment.
B
After determining that the recited features of the abutment are part of claim 5 of
the ’731 patent, the district court concluded that the accused impression caps and
burnout copings do not infringe. Although we do not address all the grounds on which
the district court based its noninfringement ruling, we agree that the accused devices do
not infringe, either literally or under the doctrine of equivalents.
1
With regard to literal infringement, we sustain the district court’s decision on two
grounds. First, as the district court explained, neither of the Straumann devices is used
in connection with an abutment having a convex, frusto-spherical basal surface portion,
because the basal surface portions of the abutments used in the Straumann system do
not have a convex frusto-spherical shape. Although Diro argues that the frusto-
spherical basal surface portion of the abutment can be either concave or convex, the
written description makes clear that the frusto-spherical basal surface portion was
intended to be convex, not concave, as the terms “frusto-spherical” basal surface
portion and “convex, frusto-spherical” basal surface portion are used interchangeably in
the written description. See ’731 patent, col. 1, ll. 46, 48-49; col. 2, ll. 52-53; col. 3, ll.
47-48, 49-50. The convex frusto-spherical basal surface portion of the abutment of the
’731 patent is depicted as number 28 in figure 1 from the patent, reproduced above.

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Even if the term “frusto-spherical” were interpreted to encompass concave structures,
the term would still not read on the Straumann abutment, because the basal portion of
the Straumann abutment does not form a portion of a sphere, either convex or concave.
Instead, the basal portion of the Straumann abutment has a frusto-conical surface, as
shown in the figures below, which depict the Straumann abutment (A), the Straumann
root member (B), and the two affixed together (C). The Straumann devices therefore do
not read on limitation [a] of the claim.
Second, the Straumann devices do not satisfy limitation [e] of claim 5, because
the taper of the pertinent portion of the internal bore of the Straumann devices matches
the taper of the shoulder portion of the Straumann root member, not the taper of the
Straumann abutment. Diro does not contend that the taper of the bore in the
Straumann impression cap and burnout coping matches the taper of the Straumann
abutment. Rather, Diro argues that “[s]o long as the caps and copings have bores with
a taper that generally matches the conical surface portion of an abutment, the devices
infringe” (emphasis in original). In other words, Diro reads limitation [e] as
encompassing any device that has a taper matching the taper of any conical surface
that could be found on any device that could serve as an abutment. The problem with
that argument is that “the abutment” of limitation [e] refers to the particular abutment
described in the preamble of the claim, not to any structure that could conceivably serve
as an abutment. Claim 5 clearly distinguishes between the abutment and the root
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member, as the district court held. Thus, for the purposes of limitation [e] we must look
to the taper of Straumann’s abutment, not the taper of some other structure such as
Straumann’s root member. Because Straumann’s bores do not match the taper of
Straumann’s abutment, the devices do not satisfy limitation [e].
Diro argues that when Straumann’s root member and abutment are screwed
together they constitute a single structure, and that the abutment and the shoulder
portion of the root member should be viewed as constituting the abutment of claim 5.
Thus defined, the abutment would have two conical surfaces, one corresponding to the
shoulder of Straumann’s root member, and one corresponding to Straumann’s
abutment. Even if we were to accept that argument, the specification clearly shows that
the conical surface referred to in claim 5 is what the patent abstract refers to as the
“crown receiving surface of the abutment.” See ’731 patent, col. 2, ll. 47-50 (“The cuff
has a tapered bore essentially matching that of the crown mounting conical portion of
the abutment member, i.e., a taper generally approximately 7 degrees . . . .”). That
conical surface, the specification notes, “has a taper of approximately 7 degrees,” id.,
col. 4, ll. 6-7, and an “anti-rotational flat surface . . . for mounting a prosthetic crown,” id.,
col. 3, ll. 45-46. In the Straumann system, the crown is mounted on the abutment,
which is tapered to approximately 7 degrees and has an anti-rotational flat surface; the
shoulder of Straumann’s root member, however, has a taper of approximately 45
degrees and no anti-rotational flat surface on which a permanent crown is mounted.
Although claim 5 is not limited to any particular angle or anti-rotational flat surface, the
specification, the drawings, and the language of claim 5 clearly show that claim 5
references the sort of conical surface found on Straumann’s abutment, not the sort

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found on Straumann’s root member. In other words, the patent calls for a bore that
matches the taper of a particular conical surface, not merely a bore that matches the
taper of any conical surface found in the dental implant system. For that reason as well,
Straumann’s devices do not literally infringe claim 5 of the ’731 patent.
2
With regard to infringement under the doctrine of equivalents, we again concur in
the district court’s analysis. We hold that the district court correctly rejected Diro’s
theory that the trumpet-shaped surface of the neck of Straumann’s root member, which
Diro characterizes as concave, is equivalent to the convex, frusto-spherical basal
surface of the abutment that is described in the ’731 patent. As the district court noted,
Diro’s theory—that a concave structure on the root member is equivalent to a convex
structure on the abutment—would be at odds with the claim limitation requiring that the
basal surface portion of the abutment be frusto-spherical in shape.
The problem that Diro faces in this regard is that limitations [a] and [b] of the
claim contain a detailed recitation of the shape of the abutment, including that it has a
frusto-spherical basal portion. A claim that contains a detailed recitation of structure is
properly accorded correspondingly limited recourse to the doctrine of equivalents. See
Tanabe Seiyaku Co. v. Int’l Trade Comm'n, 109 F.3d 726, 732 (Fed. Cir. 1997) (“The
sharply restricted nature of the claims has much to do with the scope we accord to the
doctrine of equivalents.”). That principle has special application in a case such as this
one, where the claim recites a particular shape for the basal portion of the abutment that
clearly excludes distinctly different and even opposite shapes. In such cases, we have
explained, “by defining the claim in a way that clearly excluded certain subject matter,

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the patent implicitly disclaimed the subject matter that was excluded and thereby barred
the patentee from asserting infringement under the doctrine of equivalents.” SciMed
Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1346 (Fed. Cir.
2001); see also Asyst Techs., Inc. v. Emtrak, Inc., 402 F.3d 1188, 1195 (Fed. Cir. 2005)
(“To hold that ‘unmounted’ is equivalent to ‘mounted’ would effectively read the
‘mounted on’ limitation out of the patent.”); Moore U.S.A., Inc. v. Standard Register Co.,
229 F.3d 1091, 1106 (Fed. Cir. 2000) (“[I]t would defy logic to conclude that a minority—
the very antithesis of a majority—could be insubstantially different from a claim limitation
requiring a majority, and no reasonable juror could find otherwise.”); Tronzo v. Biomet,
Inc., 156 F.3d 1154, 1160 (Fed. Cir. 1998) (to hold that a device with a hemispherical
shape infringes a patent requiring that the device have a “generally conical outer
surface” would “write the ‘generally conical outer surface’ limitation out of the claims”);
Ethicon Endo-Surgery, Inc. v. U.S. Surgical Corp., 149 F.3d 1309, 1317 (Fed. Cir. 1998)
(subject matter is “specifically excluded” from coverage under the doctrine of
equivalents if its inclusion is “inconsistent with the language of the claim”).
Both of the structures in the Straumann system that are possible candidates for
equivalence to the abutment base recited in the claim fall victim to this principle of
specific exclusion. As we have noted, the basal portion of the Straumann abutment is
frusto-conical, not frusto-spherical, and the neck of the Straumann root member is
concave, not convex. Those shapes are clearly contrary to, and thus excluded by, the
patentee’s characterization of its abutment as having a convex, frusto-spherical shape.
For that reason, neither the basal portion of the Straumann abutment nor the neck of

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the Straumann root member can be equivalent to the convex frusto-spherical basal
surface portion of the abutment recited in limitation [a].
With respect to limitation [e], Diro essentially argues that the conical top portion
of the shoulder of the Straumann root member is equivalent to the conical surface
portion of the claim 5 abutment, and therefore that the taper of Straumann’s bores is
equivalent to the taper required by the claim. We disagree. Diro’s equivalence
argument would read the taper limitation out of the claim because it would expand the
scope of that limitation to encompass any taper that matches any conical surface in the
system. As discussed above, limitation [e] of the claim explicitly refers to the abutment
that is described in the preamble, and the specification shows that the relevant conical
surface is that of the Straumann abutment, not that of the Straumann shoulder.
Accordingly, we agree with the district court that Straumann’s devices do not infringe,
either literally or under the doctrine of equivalents, and we uphold the court’s decision
granting Straumann’s motion for summary judgment of noninfringement.
III
Bicon appeals from the order of the district court dismissing it as a party on the
ground that, as a nonexclusive licensee of the ’731 patent, it lacked standing to sue for
infringement of the patent. The parties do not disagree over the proposition that an
exclusive licensee may sue on a patent, if the patent owner is joined as a party, but that
a nonexclusive licensee may not. See Schreiber Foods, Inc. v. Beatrice Cheese, Inc.,
402 F.3d 1198, 1202-03 (Fed. Cir. 2005); Ortho Pharm. Corp. v. Genetics Inst., Inc., 52
F.3d 1026, 1031 (Fed. Cir. 1995). Instead, what divides the parties is that Bicon argues

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that it was an exclusive licensee to the ’731 patent, while the district court found, and
Straumann argues, that Bicon’s license under the patent was nonexclusive.
The district court held that it was uncontroverted that Bicon was a nonexclusive
licensee of the ’731 patent. Bicon argues, however, that there was a genuine issue of
material fact before the district court as to the nature of Bicon’s license and that the
issue was therefore not one that the district court was entitled to resolve on summary
judgment.
We have examined the record references cited by Bicon in support of its
contention that its license to the ’731 patent was exclusive, and we conclude, as did the
district court, that the record does not support Bicon’s argument. The only evidence
Bicon cites in support of its contention that its license was exclusive is the testimony of
its president, Dr. Vincent Morgan. Dr. Morgan testified that Bicon’s right to practice the
patent was “exclusive at the moment,” but he promptly explained that Bicon’s right to
practice the patent was “exclusive” only in the sense that Bicon was the only licensee of
the Diro patent at the time (“[I]t’s exclusive because Bicon is the only one doing it right
now.”). He added that he was aware of nothing that would prevent Diro “from licensing
[the patent] to someone else under appropriate circumstances.” We conclude that
Bicon failed to proffer any evidence that Bicon was an exclusive licensee with the right
to exclude other prospective licensees and in that capacity had standing to bring suit for
infringement of the ’731 patent. We therefore uphold the district court’s ruling on the
standing issue.
AFFIRMED.

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