United States Court of Appeals for the Federal Circuit
2007-1327
TRIMED, INCORPORATED,
Plaintiff-Appellant,
v.
STRYKER CORPORATION,
Defendant-Appellee.
Lee F. Grossman, Grossman Law Offices, of Chicago, Illinois, argued for plaintiff-
appellant. With him on the brief were Mark M. Grossman and Jeffrey M. Drake.
Robert A. Surette, McAndrews, Held & Malloy, Ltd., of Chicago, Illinois, argued
for defendant-appellee. With him on the brief were Gregory J. Vogler and Stephanie F.
Pall.
Appeal from: The United States District Court for the Central District of California
Judge Manuel L. Real
United States Court of Appeals for the Federal Circuit
2007-1327
TRIMED, INCORPORATED,
Plaintiff-Appellant,
v.
STRYKER CORPORATION,
Defendant-Appellee.
Appeal from the United States District Court for the Central District of California in case
no. 06-CV-1918, Judge Manuel L. Real.
____________________________
DECIDED: January 29, 2008
____________________________
Before LINN, DYK, and MOORE, Circuit Judges.
MOORE, Circuit Judge.
Plaintiff-appellant TriMed, Inc. (TriMed) appeals the summary judgment of
noninfringement granted in favor of defendant-appellee Stryker Corporation (Stryker) by
the United States District Court for the Central District of California. Because the district
court construed the relevant claim language incorrectly, we reverse.
BACKGROUND
TriMed owns U.S. Patent No. 5,931,839 (’839 patent), which pertains to an
implantable device for fixing bone fractures using screws, pins, and a plate with holes
on one end for receiving screws and on the opposite end for receiving pins. In one
embodiment of the ’839 patent, the plate is fitted across a bone fracture such that the
pin holes are positioned over the fractured bone fragment and the screw holes are
positioned over the stable bone fragment. The screws affix the plate to the stable bone
fragment. The pins fixate the fracture by passing through the pin holes of the plate,
traversing the fracture such that the pins penetrate the fractured bone fragments and
embed in the stable bone fragment. Figure 5 of the ’839 patent illustrates this
embodiment:
Stryker manufactures and sells implantable wrist fracture fixation devices that
also involve screws, pins, and plates with holes. The following x-ray depicts the
implantation of one such device:
As shown, Stryker’s plate has been implanted on the distal radius. Pins have been
inserted distally through the fractured bone fragment at an angle into the stable bone
fragment. Screws have been inserted proximally to secure the plate to the stable bone
2007-1327 2
fragment.
TriMed sued Stryker, alleging that Stryker’s wrist fracture fixation devices infringe
the ’839 patent. Claim 1, the only independent claim at issue, reads as follows:
An implantable device for fixation of at least one fractured bone fragment
to a stable bone fragment, said implantable device comprising an
implantable plate having opposite end portions, fastening means for
securing one end portion of said plate to stable bone, at least one fixation
pin for penetrating said at least one fractured bone fragment, and
traversing a fracture for entering the stable bone fragment and for being
secured therein at a stable fixation site at a far end of said fixation pin, the
opposite, near end of said pin being adapted for extending from the
fractured bone fragment, said near end of said pin being engageable in
one of a plurality of holes in the other end portion of the plate, said holes
in said plate providing means for allowing the pin to slide axially therein
but preventing compression across the fracture, and stabilizing said near
end of the pin against displacement in the plane of the plate.
’839 Patent col.6 ll.17-32 (emphasis added).
Stryker moved for summary judgment of noninfringement, asserting that the
phrase, “said holes in said plate providing means for allowing the pin to slide axially
therein but preventing compression across the fracture, and stabilizing said near end of
the pin against displacement in the plane of the plate,” is a means-plus-function
limitation governed by 35 U.S.C. § 112 ¶ 6. Stryker argued, based upon two separate
grounds, that this means-plus-function limitation is not present in the accused devices.
First, according to Stryker, the language at issue requires surgeons to perform the
functions of “allowing the pin to slide axially therein but preventing compression across
the fracture” and “stabilizing said near end of the pin against displacement in the plane
of the plate.” Because, Stryker contended, its accused devices do not by themselves
perform the claimed functions and that it does not supply the surgeons who may use the
devices to perform the claimed functions, it cannot be held liable for infringement.
2007-1327 3
Second, Stryker argued that the only corresponding structures disclosed in the
specification of the ’839 patent for performing the claimed functions are “hole[s] plus
some other structure.” As the accused devices contain holes and nothing more, Stryker
asserted that it did not infringe on the ’839 patent.
Adopting Stryker’s proposed claim construction and signing without any
modification Stryker’s Rule 56 Statement of Facts and Conclusions of Law, the district
court entered summary judgment of noninfringement against TriMed. TriMed timely
appealed, and we have jurisdiction over this appeal pursuant to 28 U.S.C. § 1295(a)(1).
DISCUSSION
I.
The task of determining whether the relevant claim language contains a means-
plus-function limitation is, as with all claim construction issues, a question of law that we
review de novo. Cybor Corp. v. FAS Techs. Inc., 138 F.3d 1448, 1455-56 (Fed. Cir.
1998) (en banc). Use of the word “means” in claim language creates a presumption
that § 112 ¶ 6 applies. See Greenberg v. Ethicon Endo-Surgery, Inc., 91 F.3d 1580,
1583 (Fed. Cir. 1996). If, in addition to the word “means” and the functional language,
the claim recites sufficient structure for performing the described functions in their
entirety, the presumption of § 112 ¶ 6 is overcome—the limitation is not a means-plus-
function limitation. See Lighting World, Inc. v. Birchwood Lighting, Inc., 382 F.3d 1354,
1360 (Fed. Cir. 2004) (“[T]he fact that a particular mechanism . . . is defined in
functional terms is not sufficient to convert a claim element containing that term into a
‘means for performing a specified function’ within the meaning of section 112(6).”); Sage
Prods., Inc. v. Devon Indus., Inc., 126 F.3d 1420, 1427-28 (Fed. Cir. 1997). Sufficient
2007-1327 4
structure exists when the claim language specifies the exact structure that performs the
functions in question without need to resort to other portions of the specification or
extrinsic evidence for an adequate understanding of the structure. See Altiris, Inc. v.
Symantec Corp., 318 F.3d 1363, 1376 (Fed. Cir. 2003); see also Envirco Corp. v.
Clestra Cleanroom, Inc., 209 F.3d 1360, 1365 (Fed. Cir. 2000) (finding that “baffle
means” defeated the § 112 ¶ 6 presumption because “the term ‘baffle’ itself imparts
structure”).
The district court erred in concluding that the language at issue in claim 1 was
means-plus-function language that invoked § 112 ¶ 6. To be sure, the claim discloses
functions for the holes—allowing a pin to slide axially through the pin plate while
preventing compression across the bone fracture, and stabilizing the exposed end of
the pin against displacement in the plane of the plate. As our precedent makes clear,
the presence of the word “means” and the articulation of a function is not the end of the
inquiry. Just as clearly, the claim articulates the structure for performing the claimed
functions—the holes. The functional language defines the size and shape of the
claimed holes. The interior of the holes must be shaped to allow pins to slide through
axially while the boundaries of the holes must be sized appropriately to hold the pins in
place and limit their movement across the plane of the plate. The claim language
makes clear that the structure for performing these functions is the holes themselves.
Since the claim language clearly identifies the structure for performing the
functions in claim 1, it was unnecessary and inappropriate for the court to employ § 112
¶ 6 and to hold that there must be a structure in addition to the holes (such as a slot) for
performing these functions. Even if we were to construe this as a § 112 ¶ 6 claim, the
2007-1327 5
specification discloses an embodiment that has precisely the same structure that is
found in the accused devices. The specification states: “In one embodiment the pins 8
are bent over the superficial surface of the plate 1 as stated above.” ’839 Patent col.5
ll.24-25. The reference is to an earlier part of the specification, which stated that: “The
rigidity of pin fixation of the fracture fragment is considerably improved by having it pass
through one of the small holes 3 and possibly a tight slot 4 in the pin plate 1 which has
been secured to the proximal fragment 10. After the pin 8 is placed, it can be bent over
the superficial surface of the plate 1 to keep it from migrating.” 1 Id. col.4 ll.56-61.
Stryker argues that the prosecution history of the ’839 patent dictates that the
claim limitation at issue does not recite sufficient structure for performing the described
functions and instead must be read as requiring “hole[s] plus another structure.”
Specifically, Stryker points to an interview summary that states, “Agreement was
reached that the expression of [the configuration of the pin to be attached to the plate in
a sliding manner that prevents compression across the fracture] in a means-plus-
function format and better defining the holes of the plate would distinguish over the prior
art of record.” 2 Because TriMed subsequently amended claim 1 to include the claim
language in dispute, Stryker contends that the language must be construed as a
means-plus-function limitation.
1
Additional structures for performing the claimed functions beyond mere
holes, such as slots and other means for snap engagement of the pin to the plate, are
recited in dependent claims not discussed in this opinion. See, e.g., ’839 Patent col.6
ll.36-39.
2
A statement that use of means-plus-function language would help
overcome prior art does not magically transform language that clearly does not meet
our legal tests for § 112 ¶ 6 into means-plus-function language.
2007-1327 6
We disagree. While TriMed did use the word “means” in its amendment, its
attorney remarks accompanying the amendment indicate that it intended for holes by
themselves to constitute structure sufficient for allowing pins to slide axially through
without compressing the fracture and stabilizing the pin from displacement across the
plane of the plate. As the remarks put forth:
The invention provides for stabilization of the end of the pin projecting
from the fractured bone fragment without compromising the securing of
the fractured bone segment to the stable bone segment without
compression at the fracture. This is achieved by utilization of the pin plate
1 which has holes at one end portion for being fixed to stable bone while
the opposite end has holes for engaging the protruding end of the pin, so
as to prevent displacement of the protruding end of the pin in the plane of
the pin plate and wherein the hole provides means for allowing the pin to
slide axially in the hole in the pin plate but preventing compression across
the fracture.
Nowhere in those remarks does TriMed suggest the importance of any structure in
addition to holes, as Stryker would have us believe. See Cole v. Kimberly-Clark Corp.,
102 F.3d 524, 531 (Fed. Cir. 1996) (explaining that the claim drafter’s “perfunctory
addition of the word ‘means’ did nothing to diminish the precise structural character” of
the claim limitation). The prosecution statement does not even suggest that structure in
addition to holes is required.
For the foregoing reasons, the claim language at issue recites sufficient structure
on its face for performing the claimed functions, and therefore, contrary to the district
court’s interpretation, does not involve a means-plus-function limitation.
II.
We review the district court’s grant of summary judgment without deference,
reapplying the same standard required of the court below. Lacavera v. Dudas, 441 F.3d
1380, 1382 (Fed. Cir. 2006). Summary judgment is appropriate only “if the pleadings,
2007-1327 7
depositions, answers to interrogatories, and admissions on file, together with the
affidavits, if any, show that there is no genuine issue as to any material fact and that the
moving party is entitled to judgment as a matter of law.” Fed. R. Civ. P. 56(c).
Stryker’s motion for summary judgment of noninfringement was premised solely
upon reading the claim language at issue as a means-plus-function limitation. Having
properly construed the relevant claim language as falling outside the ambit of § 112 ¶ 6,
we hold that Stryker has failed to demonstrate that there is no genuine issue of material
fact that its accused devices do not infringe on the ’839 patent. By Stryker’s own
admission, the structural limitation of holes in claim 1 is certainly present in its accused
devices. 3
Moreover, TriMed has adduced enough evidence to establish, at minimum, a
genuine issue of material fact as to whether Stryker’s accused devices perform the
claimed functions. TriMed submitted a declaration from Dr. Leon Benson, an orthopedic
hand surgeon, which stated that the holes in Stryker’s accused devices perform both
claimed functions based on his review of x-rays of the implanted Stryker plates and
Stryker’s operative technique manuals. TriMed also submitted a declaration from Dr.
Robert Medoff, an orthopedic hand surgeon and the inventor behind the ’839 patent,
that stated that, based on an analysis of a product sample of Stryker’s plates and its
operative technique manual, pins can be slid axially through the pin holes in Stryker’s
3
With a side-by-side comparison of figure 5 of the ’839 patent and the x-ray
of Stryker’s implanted plate, it is hard to imagine any significant structural differences
between the two. Indeed, Stryker was unable to point out any differences on appeal,
only contending during oral argument that figure 5 does not show whether the pin has
been inserted through a hole or a hole with some other structure. As the proper
construction of claim 1 encompasses embodiments using holes to receive pins—with or
without some other structure—this argument is unconvincing.
2007-1327 8
plates such that compressive force across a fracture is avoided, and that the holes are
“small enough to secure the pin from lateral movement thus stabilizing the pin from
translational displacement in the plane of the plate.”
Stryker’s only counterargument below, which the district court adopted—that it
did not supply the surgeons who were purportedly required to perform the claimed
functions of the ’839 patent—is wholly unpersuasive. No credible reading of the claim
language requires human input to perform the functions of the pin holes in TriMed’s
plate. Stryker’s only response on appeal—that “the accused devices do not permit the
end of the pin to be locked to the pin plate”—is similarly unavailing. Locking the pin to
the plate is simply not a requirement of the claim language. Thus, because the
summary judgment of noninfringement is inappropriate, we reverse.
CONCLUSION
Because the claim language of the ’839 patent articulates sufficient structure for
performing the functions of allowing pins to slide axially through the pin plate and
stabilizing said pins from movement across the plane of the plate of the claimed
invention, we determine that the district court improperly interpreted the pin holes claim
limitation as governed by § 112 ¶ 6. In light of the proper claim construction, the grant
of summary judgment of noninfringement must be reversed. We remand for further
proceedings consistent with our opinion and in view of the entire record. 4
REVERSED AND REMANDED
4
Given our holding vacating the summary judgment of noninfringement, the
time for discovery ought to be reinstated as originally scheduled in this case. The
seventeen days of discovery should be fully restored.
2007-1327 9