United States Court of Appeals for the Federal Circuit
2006-1260, -1437
ACUMED LLC,
Plaintiff-Appellee,
v.
STRYKER CORPORATION, STRYKER SALES CORPORATION,
STRYKER ORTHOPAEDICS, and HOWMEDICA OSTEONICS CORPORATION,
Defendants-Appellants.
Frederick C. Laney, Niro, Scavone, Haller & Niro, of Chicago, Illinois, argued for
plaintiff-appellee. With him on the brief were Paul K. Vickrey, Robert A. Vitale, and
Richard B. Megley, Jr.
Gregory J. Vogler, McAndrews, Held & Malloy, Ltd., of Chicago, Illinois, argued
for defendants-appellants. With him on the brief was Sharon A. Hwang.
Appealed from: United States District Court for the District of Oregon
Judge Anna J. Brown
United States Court of Appeals for the Federal Circuit
2006-1260, -1437
ACUMED LLC,
Plaintiff-Appellee,
v.
STRYKER CORPORATION, STRYKER SALES CORPORATION,
STRYKER ORTHOPAEDICS, and HOWMEDICA OSTEONICS CORPORATION,
Defendants-Appellants.
__________________________
DECIDED: April 12, 2007
__________________________
Before GAJARSA, LINN, and MOORE, Circuit Judges.
Opinion for the court filed by Circuit Judge GAJARSA. Dissenting opinion filed by
Circuit Judge MOORE.
GAJARSA, Circuit Judge.
This patent infringement case deals with orthopedic devices for the treatment of
fractures to the upper arm. Defendants Stryker Corp., Stryker Sales Corp., Stryker
Orthopaedics, and Howmedica Osteonics Corp. (collectively, “Stryker”) appeal from the
final judgment of the United States District Court for the District of Oregon, following a
jury trial, finding Stryker liable to plaintiff Acumed LLC (“Acumed”) for willful infringement
of U.S. Patent No. 5,472,444 (“the ’444 patent”). We affirm the district court’s findings
of infringement and willfulness, but vacate the permanent injunction issued against
Stryker and remand for reconsideration in light of the Supreme Court’s decision in eBay
Inc. v. MercExchange, LLC, 126 S. Ct. 1837 (2006).
I. BACKGROUND
A. The Technology and Patent
Acumed is the assignee of the ’444 patent, which is directed to an orthopedic nail
for the treatment of fractures in the humerus (the upper arm bone which ends in the
shoulder ball at top and the elbow joint at the bottom). In the most common form of
fracture to this bone, the patient falls on top of his or her arm, breaking the shoulder ball
(the “humeral cortex”) off from the longer part of the bone (the “humeral shaft”).
Sometimes the humeral cortex itself breaks into two or three pieces as well. See ’444
patent col.1 ll.17-27. Orthopedic surgeons use nails like the one disclosed in the patent
to treat this type of fracture by excavating a hole through the humeral cortex and down
the humeral shaft, inserting the nail into the hole, then fixing it in place using bone
screws that pass through holes in the nail. This procedure secures the bone pieces of
the cortex to each other and to the shaft.
Claim 1 of the ’444 patent contains every limitation disputed on appeal by the
parties. It reads:
An elongated tapered nail for securing fractures of the proximal humerus
comprising:
an elongated body having a curved shank configured to occupy an upper
portion of the proximal humeral shaft, and a contiguous butt portion
extending proximally from the shank and configured to occupy the
humeral cortex;
the butt portion being shorter than the shank and defining a plurality of at
least three transverse holes, each defining a hole axis, with the three hole
axes angularly offset from each other, such that the holes may receive
fasteners attached to fragments of the humeral cortex.
’444 patent col.5 ll.44-50 (disputed terms emphasized).
2006-1260, -1437 2
B. Stryker’s Dealings with Opinion Counsel
On August 28, 2002, Stryker’s German patent attorney, Edo Graalfs, wrote a
letter to his American counterpart, Raymond W. Augustin, regarding the humeral nail
Stryker was in the process of developing. Graalfs expressed concern that the Stryker
nail might infringe the ’444 patent:
[T]he independent claim 1 of this US patent has a relatively brought [sic,
“broad”] scope of protection . . . . I advised that the nail must not be
provided with a curvature as this is a feature of independent claim 1. Now
it turned out that for business reasons it would be a requirement to also
use a curved shank. I expressed my doubts . . . that it could be possible to
find a structure not covered by the mentioned US patent.
Augustin then placed a memorandum to file dated December 13, 2002, in which he
echoed Graalfs’ concerns:
[T]he Stryker Trauma humeral nail would have each and every element of
claim 1 . . . of the ’444 patent. . . . [I]t is our opinion that there is no strong
invalidity argument which could be used against all the ’444 issued claims
based on the prior art known at this time. . . . In conclusion, it is our
opinion that a curved version of the Stryker Trauma humeral nail . . .
should not be marketed in the United States.
Testimony at trial indicated that the Stryker nail eventually sold in the United States did
not differ in any relevant respect from the design specifications reviewed by Graalfs and
Augustin in writing these letters.
After his initial memorandum to file, Augustin drafted a formal opinion of counsel
letter and transmitted it to Stryker on November 19, 2003. This opinion letter was
longer and more detailed than the earlier memo to file. In it, Augustin concluded—using
claim construction arguments basically identical to those made by Stryker during this
litigation—that the Stryker nail would not infringe any claim of the ’444 patent either
2006-1260, -1437 3
literally or by equivalents. He also expressed a belief that Claim 1 of the ’444 patent
was invalid due to anticipation by an earlier Stryker product. 1
At trial, Acumed presented evidence tending to show that Stryker did not
seriously rely upon the later opinion letter from Augustin. For instance, Stryker filed with
the FDA its application for the accused device on August 14, 2003, some months before
Augustin transmitted the favorable opinion letter. Gregory Plakson, Stryker’s Director of
Intellectual Property, testified at his deposition that he did not understand portions of the
opinion letter and did not ask Augustin anything about the opinion. Acumed also
presented evidence tending to show copying by Stryker, including that a Stryker
consultant “confiscated” from an operating room a how-to chart detailing the assembly
and insertion of Acumed’s product.
C. Litigation background
Stryker began to sell its accused humeral nail in the United States in early 2004.
In April 2004, Acumed filed suit against Stryker in the District of Oregon, alleging
infringement of Claims 1, 3-5, 10, 11, and 14-17 of the ’444 patent. Following a
Markman hearing, the district court construed the disputed terms. It defined “curved
shank” as “a shank that has a bend or deviation from a straight line without sharp
corners or sharp angles” and “transverse holes” as “holes across the butt portion of the
nail.” It also found that
the term “angularly offset from each other” means the axes of the three
holes are spaced apart from each other, an angle is formed by the axes of
any two such holes when viewed in two dimensions from the butt end or
from the side, and the axes are not aligned in a parallel orientation.
1
Stryker does not pursue any invalidity arguments in this appeal.
2006-1260, -1437 4
Acumed LLC v. Stryker Corp, No. 04-CV-513-BR (D. Or. Oct. 14, 2004) (“Order on
Claim Construction”). The case proceeded to jury trial on infringement, willfulness, and
invalidity. The jury found that the asserted claims were valid, that Stryker’s product
literally infringed those claims, and that Stryker’s infringement was willful. The district
court denied Stryker’s motion for judgment notwithstanding the verdict and awarded
Acumed enhanced damages for willful infringement, increasing the damages found by
the jury by fifty percent. It permanently enjoined Stryker from selling the accused device
in the United States.
Stryker appeals the jury verdict of infringement and willfulness and the district
court’s grant of injunctive relief. This court has jurisdiction pursuant to 28 U.S.C.
§ 1295(a)(1).
II. DISCUSSION
A. Standard of review
A finding of patent infringement requires a two-step process: first, the court
determines the meaning of the disputed claim terms, then the accused device is
compared to the claims as construed to determine infringement. Markman v. Westview
Instruments, Inc., 52 F.3d 967, 976 (Fed. Cir. 1995), aff’d, 517 U.S. 370 (1996). We
review the construction step de novo. Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448,
1456 (Fed. Cir. 1998) (en banc). When reviewing a district court’s denial of a motion for
judgment as a matter of law, we review the jury’s factfinding on the infringement step for
support by substantial evidence. Id. at 1454. Whether infringement is willful is a factual
question that must be proven by clear and convincing evidence. Comark Commc’ns v.
Harris Corp., 156 F.3d 1182, 1190 (Fed. Cir. 1998). To reverse a willfulness verdict, an
2006-1260, -1437 5
infringer must show that there is not “substantial evidence to support the jury's finding of
willfulness by clear and convincing evidence.” Id.
B. Claim Construction and Infringement
1. “Curved shank”
The main dispute between the parties on construction relates to the claim
requirement of a “curved shank,” construed by the district court to mean a shank that
“has a bend or deviation from a straight line without sharp corners or sharp angles.”
Stryker challenges that interpretation, arguing that the better reading of the term is “a
nonangular continuous bend.”
When construing claims, a court must begin by “look[ing] to the words of the
claims themselves . . . to define the scope of the patented invention.” Phillips v. AWH
Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (quoting Vitronics Corp. v.
Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). The task of comprehending
those words is not always a difficult one. “In some cases, the ordinary meaning of claim
language as understood by a person of skill in the art may be readily apparent even to
lay judges, and claim construction in such cases involves little more than the application
of the widely accepted meaning of commonly understood words.” Id. at 1314.
“[C]urved,” as it is used in the ’444 patent, is not a “term[] that ha[s] a particular meaning
in a field of art.” Id. Its ordinary meaning encompasses “curvature” made up of small
discontinuities. Consider, for instance, an archway made from rectangular bricks. The
bricks are at angles with respect to each other, but the overall effect is to describe an
arc. It would be unreasonable to say that such an archway is not “curved.” If the word
“curved” is given its ordinary, lay meaning, the district court’s construction is correct.
2006-1260, -1437 6
Stryker argues that “curved” is implicitly assigned a different, narrower meaning
by virtue of the context in the written description in which it appears. See id. at 1316
(“[T]he specification may reveal a special definition given to a claim term by the
patentee that differs from the meaning it would otherwise possess. In such cases, the
inventor’s lexicography governs.”). That argument is based on a particular manner of
implanting the nail disclosed and touted by the written description. The ’444 patent’s
Summary of the Invention section states that “[t]he curved tapered shape of the present
invention permits it to be inserted into a cavity formed by a broach tool having the same
shape as the nail.” ’444 patent col.1 ll.49-51. A broach tool is “essentially a rasp having
the same profile as the hole it is intended to form.” Id. col.3 ll.27-28. The patent
teaches that broaching is advantageous, since, inter alia, it “generally causes less
tissue damage than a rotating drill bit or reamer.” Id. col.3 ll.32-33. However,
“[b]roaching is only suitable for certain shapes of holes and objects”—in particular, it is
useful only for an object that “largely pass[es] through its own envelope.” Id. col.3 ll.37-
40. “Objects with angled bends or small radius curves (relative to the object length) do
not pass through their own envelope on insertion, and are not well suited to insertion
into a broached hole.” Id. col.3 ll.45-48.
Stryker’s argument is essentially an assertion that since the patent says
broaching is desirable, the term “curved” must be construed to cover only embodiments
whose curvature allows them to be inserted into a broached hole, excluding “angled
bends or small radius curves.” That assertion is flawed: it is an attempt to import a
feature from a preferred embodiment into the claims. See Phillips, 415 F.3d at 1323
(“[A]lthough the specification often describes very specific embodiments of the
2006-1260, -1437 7
invention, we have repeatedly warned against confining the claims to those
embodiments.”). Neither use with a broaching tool nor suitability for such use is
claimed. Indeed, the application which led to the ’444 patent originally included claims
to the method of implanting the nail with a broaching tool, but the patentee elected to
withdraw those claims from the application after the Examiner noted they were directed
to a separate, distinct invention.
The fact that usability with a broaching tool is merely a feature of a preferred
embodiment provides sufficient grounds for refusing to read “curved” narrowly. We also
note, though, that the patent’s Claim 13 (not asserted by Acumed in this case) covers
“[t]he nail of claim 1 having a profile that substantially passes within its own envelope.”
’444 patent col.6 ll.26-27. “[T]he presence of a dependent claim that adds a particular
limitation raises a presumption that the limitation in question is not found in the
independent claim.” Liebel-Flarsheim Co v. Medrad, Inc., 358 F.3d 898, 910 (Fed. Cir.
2004); see also Wegner Mfg., Inc. v. Coating Mach. Sys., Inc., 239 F.3d 1225, 1234
(Fed. Cir. 2001); Comark, 156 F.3d at 1187; Tandon Corp. v. U.S. Int’l Trade Comm’n,
831 F.2d 1017, 1023 (Fed. Cir. 1987). “That presumption is especially strong when the
limitation in dispute is the only meaningful difference between an independent and
dependent claim, and one party is urging that the limitation in the dependent claim
should be read into the independent claim.” Sunrace Roots Enter. Co. v. SRAM Corp.,
336 F.3d 1298, 1303 (Fed. Cir. 2003); see also Ecolab Inc. v. Paraclipse, Inc., 285 F.3d
1362, 1375-76 (Fed. Cir. 2002); Wegner Mfg., 239 F.3d at 1233 (“Claim differentiation
. . . is clearly applicable when there is a dispute over whether a limitation found in a
dependent claim should be read into an independent claim, and that limitation is the
2006-1260, -1437 8
only meaningful difference between the two claims.”). If we were to give “curved” in
Claim 1 the meaning which Stryker advances, Claim 1 would cover only nails that
“substantially pass[] within [their] own envelope[s].” Such a restrictive reading would
render Claims 1 and 13 identical in scope. Since independent claims are presumed to
have broader scope than their dependents, the presumption is that Claim 1 should not
be limited in the manner Stryker urges. For the reasons discussed above, that
presumption has not been rebutted.
Stryker also argues that the district court’s exclusion of “sharp corners or sharp
angles” renders the construction insufficiently definite, since the court did not specify
precisely how “sharp” is too sharp. However, a sound claim construction need not
always purge every shred of ambiguity. The resolution of some line-drawing
problems—especially easy ones like this one—is properly left to the trier of fact. See
PPG Indus. v. Guardian Indus. Corp., 156 F.3d 1351, 1355 (Fed. Cir. 1998) (“[A]fter the
court has defined the claim with whatever specificity and precision is warranted by the
language of the claim and the evidence bearing on the proper construction, the task of
determining whether the construed claim reads on the accused product is for the finder
of fact.”); Modine Mfg. Co. v. U.S. Int’l Trade Comm’n, 75 F.3d 1545, 1554 (Fed. Cir.
1996) (whether claim limitation requiring diameter of “about 0.040 inch” embodied held
a matter of “technologic fact”); see also Abbott Labs. v. Baxter Pharm. Prods., Inc., 471
F.3d 1363, 1368 (Fed. Cir. 2006) (where result is the same under any reasonable
construction, “we need not construe [the disputed] phrase with numerical exactitude.”).
Here, the accused product has a rounded-off six-degree angle in its shaft. A
reasonable jury could have found that in the context of this sort of nail, a rounded bend
2006-1260, -1437 9
of six degrees was not a “sharp angle.” The jury’s conclusion is bolstered by the
testimony of Stryker’s own technical expert, who noted in reference to the Stryker nail
that “there’s no sharp angle there.” There may be some area of imprecision within the
district court’s “without sharp angles” construction, but this accused product is in no
danger of falling within that area. The construction is correct, and the jury’s finding that
the Stryker nail possesses a “curved shank” is supported by substantial evidence.
2. “Transverse holes”
The district court defined “transverse holes” as “holes across the butt portion of
the nail.” Stryker argues that this claim term should be limited to holes that are
perpendicular to the nail shaft, excluding from the claim scope holes that are tilted so
that one end of the hole is vertically offset from the other end. Again, this argument is
an improper attempt to read a feature of the preferred embodiment into the claims as a
limitation.
Stryker’s argument for a narrow reading of “transverse” stems from the fact that
“[e]very description of the transverse holes in the ’444 patent contemplates a
perpendicular hole.” This is a correct characterization of the patent: every figure which
illustrates the holes shows them going perpendicularly through the shaft, and the written
description characterizes the holes in Figure 2 as “perpendicular to the portion of the
nail axis at the butt portion 14 of the nail.” ’444 patent col.2 ll.58-59. However, Figure 2
and the text characterizing it simply discloses a single, preferred embodiment of the
invention. “[A]lthough the specification often describes very specific embodiments of
the invention, we have repeatedly warned against confining the claims to those
embodiments.” Phillips, 415 F.3d at 1323; see also Comark, 156 F.3d at 1186-87.
2006-1260, -1437 10
The plain meaning of Claim 1 covers more than the particular embodiment
shown in the figures. While the disclosed embodiment possesses “perpendicular”
holes, the claim language covers all “transverse” holes—a word that does not
necessarily imply right angles. Moreover, the patentees’ description of their preferred
embodiment itself implies a difference between the words “perpendicular” and
“transverse.” The written description states that Figure 2 “illustrates a plurality of
transverse holes, each of which is . . . perpendicular to the portion of the nail axis at the
butt portion 14 of the nail.” ’444 patent col.2 ll.56-59. This implies that a “transverse”
hole need not be “perpendicular”—if it were, the patentee would not have needed to
clarify that these holes, in addition to being transverse, were perpendicular to the nail
axis. Just as in Phillips, where the asserted claim mentioned “steel baffles” and hence
“strongly implie[d] that the term ‘baffles’ does not inherently mean objects made of
steel,” 415 F.3d at 1314, this usage of language is strong evidence that the patentee
considered “transverse” and “perpendicular” to have distinctly different meanings.
The intrinsic evidence of the specification therefore suggests that the patentees
knew how to restrict their claim coverage to holes passing through at right angles. They
could have used the word “perpendicular,” as they did in discussing their preferred
embodiment. Instead, they chose a different term that implies a broader scope. The
intrinsic evidence does not indicate that one of skill in the art would believe the
patentees meant “perpendicular” when they said “transverse.” There is very little
indication that the patentees considered perpendicularlity important to their invention.
The patentees tout the virtue of their preferred hole orientation only once, noting that
“[t]he predictability of fracture modes makes the orientation of holes in the illustrated
2006-1260, -1437 11
embodiment suitable in most cases.” ’444 patent col.4 ll.65-67 (emphasis added). Far
from demonstrating that “the patentee[s] . . . intend[ed] for the claims and the
embodiments in the specification to be strictly coextensive” with respect to this
limitation, Phillips, 415 F.3d at 1323, this statement admits that the disclosed
perpendicular hole orientation may not always be ideal. See ’444 patent col.5 ll.2-4
(suggesting that, if holes are not “ideally situated, the surgeon may slightly rotate the
nail to achieve a more favorable alignment”). Nowhere in the specification or the
prosecution history do the patentees criticize or distinguish tilted, non-perpendicular
holes.
The dissent states that the specification language which discloses only
perpendicular holes should be determinative of the claim scope. In particular, it points
to three instances in the written description where “transverse holes” are described as
“perpendicular.” Dissent at 3-4 (citing ’444 patent col. 2 ll.57-59; col.3 ll.1-3; col.3 ll.9-
11). All three of these instances appear in a textual description of the patent’s Figure 2,
indicating that the holes depicted in that figure are perpendicular to the nail axis. Thus,
while the dissent emphasizes the fact that there are three references to “perpendicular”
holes in the specification, its argument is ultimately premised on characteristics which
the patentee has attributed to a single preferred embodiment. In the context of this
patent, such an argument must be contradicted by “our repeated statements that
limitations from the specification are not to be read into the claims.” Comark, 156 F.3d
at 1186; see also id. at 1187 (“[T]he language that [the defendant] argues should limit
claim 1 is clearly found in the . . . patent’s description of the preferred embodiment. It is
precisely against this type of claim construction that our prior case law counsels.”).
2006-1260, -1437 12
By highlighting the specification phrase “each of which is defined” and by
describing that phrase as “important[],” Dissent at 5, the dissent appears to suggest that
the patentee has in some sense imposed a limiting definition upon the word
“transverse.” But the use of the word “defined” here does not imply a lexicographic
definition, especially not a definition of “transverse” to mean “perpendicular.” Instead,
the statement that the holes of the cited embodiment are “defined on . . . an axis”
merely introduces the useful abstract concept of a “hole axis,” later employed in the
claims to describe the orientation of the holes with respect to each other. See ’444
patent, Claim 1, col.5 ll.53-54 (“the three hole axes [are] angularly offset from each
other . . .”). The claims repeatedly echo this form of usage of the word “define.” See,
e.g., ’444 patent Claim 1, col.5 ll.51-53 (“the butt portion . . . defining a plurality of at
least three transverse holes, each defining a hole axis” (emphasis added)); Claim 2,
col.5 ll.57-58 (“the curved shank includes a curved portion defining a curved central
axis”); Claim 3, col.5 ll.60-61 (“the butt portion defines a central axis”). If the word
“define” were always to be an important signifier of limitation, this claim language would
indicate that the butt portion has been defined to be transverse holes, that those holes
in turn have been defined as hole axes, and that the curved portion and butt portion—
physical parts of the nail—have each been dubbed identical to an imaginary central
axis. These interpretations are incorrect, but they are the natural consequence of
finding a restrictive definition of a term anywhere the word “define” might appear in this
patent, regardless of context. The specification does not define “transverse” and
“perpendicular” to be coequal in meaning.
2006-1260, -1437 13
The fact that the term “transverse” has a broader scope than “perpendicular” also
distinguishes this case from Nystrom v. Trex Co., 424 F.3d 1136 (Fed. Cir. 2005), relied
upon by the dissent. See Dissent at 5-6. In Nystrom, “both parties acknowledge[d] the
ordinary meaning of ‘board’ as ‘a piece of sawed lumber,’” but the patentee sought to
have that claim term “broaden[ed] . . . to encompass relatively obscure definitions that
are not supported by the written description or prosecution history.” Id. at 1145. We
refused to impose a construction broader than the term’s ordinary meaning. Id. at 1145-
46. Here, on the contrary, we decline to impose a construction narrower than the term’s
ordinary meaning.
The dissent cites to other patents whose usage of “transverse” arguably supports
its conclusion. Dissent at 8-9. One of them, U.S. Patent No. 5,697,934, is purely
extrinsic evidence and therefore merits little consideration. See Phillips, 415 F.3d at
1317. The other, U.S. Patent No. 4,475,545, is cited by the ’444 patent and is part of
the intrinsic record. However, it was not “created by the patentee in attempting to
explain and obtain the patent.” Id. Its usage is not that of this patentee, and so it also
merits less weight than the evidence of the patentee’s own words. While these patents
merit some consideration, the specification and claims of the ’444 patent itself should be
given significantly greater weight. Id. (noting that prosecution evidence “is less useful
for claim construction purposes”).
A proper reading of the intrinsic evidence indicates that where the patentees
discussed the perpendicular holes of their preferred embodiment, they were not
narrowly defining the term “transverse” or otherwise limiting the claims, but merely
discharging their statutory duties “to teach and enable those of skill in the art to make
2006-1260, -1437 14
and use the invention and to provide a best mode for doing so.” Phillips, 415 F.3d at
1323. That preferred embodiment cannot be the only product covered by the claims; if
it were, the claims themselves would be unnecessary. The district court’s construction
of “transverse holes” is correct. 2
3. “Angularly offset”
As noted above, the district court interpreted the claim requirement that the hole
axes be “angularly offset” to mean that “the axes of the three holes are spaced apart
from each other, an angle is formed by the axes of any two such holes when viewed in
two dimensions from the butt end or from the side, and the axes are not aligned in a
parallel orientation.” Neither party challenges this definition on appeal, but Stryker
argues that its accused product does not fall within the definition.
2
Observing that the district court defined “holes” as “openings through the
butt portion of the nail” and “transverse” as “being across or set crosswise,” the dissent
argues that these two definitions imply that “transverse holes” has been construed to
mean “openings through across the butt portion of the nail.” Dissent at 7. If the district
court’s definitions of those two words are so concatenated, that is indeed the result. We
of course do not propound such a construction. Neither did the district court: after
defining “transverse” and “holes,” it defined the phrase “transverse holes” as “holes
across the butt portion of the nail.” Order on Claim Construction at 1. The construction
of the disputed phrase as a whole is correct, and that construction is what we affirm
today. Our de novo review means that we need not decide whether the logic or
subsidiary definitions used by the district court to reach the correct construction were
sound. Likewise, de novo review makes the atmospherics of the Markman hearing, see
Dissent at 1-3, legally irrelevant here. We review only the district court’s finished
product, not its process. Furthermore, the dissent’s criticism of that process contends
that Phillips prohibited the district court from beginning its interpretive inquiry by
consulting a dictionary. Dissent at 3 (“In accordance with Phillips, the interpretative
inquiry should begin not with a dictionary definition . . . .”). Although in Phillips we
rejected an approach in which a broad dictionary definition is adopted and then whittled
down only if contradicted by the specification, 415 F.3d at 1321, we did not prohibit the
use of dictionaries in claim construction, nor did we define at what point in the claim
construction analysis they may be consulted.
2006-1260, -1437 15
Stryker’s argument is geometrical in nature. A “hole axis” under the district
court’s definition is the imaginary line that passes through the center of one of the
transverse holes. Stryker correctly points out that the axes thus defined by the accused
product form “skew lines” which are neither parallel nor intersecting in three-dimensional
space. Since those lines neither form angles nor run parallel with each other, Stryker
suggests that its product falls outside the district court’s definition. However, this
argument ignores an essential part of that definition, which states that “an angle is
formed . . . when [the hole axes are] viewed in two dimensions.” The district court’s
meaning here is clear: the hole axes need not actually intersect. It suffices that the
axes appear to intersect in two dimensions. As an example, if the hole axes are
sketched on a piece of paper (a two-dimensional view of the nail) and the lines of that
drawing intersect, the product drawn meets the district court’s definition of “angularly
offset.” It is totally clear that the hole axes of Stryker’s product intersect when drawn on
paper, a point well illustrated by Stryker’s own diagram in support of its argument on this
point:
This diagram, which represents the accused product, shows intersecting hole
axes when viewed in two dimensions. The jury’s finding that Stryker’s product
2006-1260, -1437 16
embodies the “angularly offset” claim limitation is therefore supported by substantial
evidence.
4. Conclusion
Since the district court’s claim construction is correct and there is substantial
evidence to support the jury’s finding that Stryker’s product embodies each claim
limitation at issue, the judgment of infringement is affirmed.
C. Willful Infringement
The jury found Stryker’s infringement to be willful, despite the fact that Stryker
admitted into evidence the November 19, 2003 opinion letter from Augustin which
concluded that Stryker’s product would not infringe. Favorable opinions of counsel
normally present a well-grounded defense to willfulness, but the protection they afford is
not absolute. “Those cases where willful infringement is found despite the presence of
an opinion of counsel generally involve situations where opinion of counsel was either
ignored or found to be incompetent.” Read Corp. v. Portec, Inc., 970 F.2d 816, 828-29
(Fed. Cir. 1992).
Willfulness is “not an all-or-nothing trait, but one of degree.” Comark, 156 F.3d at
1182 (quoting Rite-Hite Corp. v. Kelley Co., 819 F.2d 1120, 1125-26 (Fed. Cir. 1987)).
Whether an infringer ignored the opinion of its counsel is, as part of the willfulness
inquiry, also a question of degree. Evidence of the extent of that ignorance should be
weighed by the factfinder together with the totality of the other circumstances
surrounding the infringer’s culpability. See Comark, 156 F.3d at 1191 (evaluating
opinion of counsel within a totality of the circumstances).
2006-1260, -1437 17
Here, substantial evidence supports a finding that Stryker ignored the November
2003 opinion letter to an extent sufficient to permit willfulness to be found in these
circumstances. Most notable is the fact that two patent attorneys, Graalfs and Augustin,
had at first strongly discouraged Stryker from marketing the infringing nail in the United
States. Despite that advice, Stryker continued to push towards a United States market
entry, filing its FDA application months before it received Augustin’s revised legal
advice. Additionally, Acumed presented evidence that Stryker copied its product,
including that Stryker arranged to “confiscate” a hospital room chart instructing doctors
in the use of the Acumed nail.
There is evidence in the record tending against willfulness, such as the Augustin
opinion letter itself and the testimony of Stryker’s Director of Intellectual Property that he
ordered no sales be made in the United States until after the favorable opinion letter.
However, it is for the jury, not this court, to determine the weight and credibility to be
given to the evidence. See Comark, 156 F.3d at 1192 (court determining whether to
overturn a jury verdict is “not required to assume that the jury believed all or indeed any
. . . exculpatory evidence”). The jury here was free to disbelieve or weigh lightly
evidence tending to show Stryker’s reliance on the opinion letter and to place that
evidence within the overall factual context of the case.
Substantial evidence supports the jury’s finding that Stryker’s infringement was
willful. The judgment of willfulness is therefore affirmed.
D. Permanent Injunction
In ruling on the plaintiffs’ motion for a permanent injunction, the district court
applied “the general rule [in patent cases] that an injunction will issue, once infringement
2006-1260, -1437 18
and validity have been adjudged . . . unless there are some exceptional circumstances
that justify denying injunctive relief.” Transcript of Record at 53, Acumed, LLC v.
Stryker Corp., No. CV-04-513 (D. Oregon Feb. 22, 2006). The Supreme Court has
since struck down that general rule in eBay v. MercExchange, making clear that the
traditional four-factor test for injunctions applies to patent cases. 126 S. Ct. at 1840.
Acumed argues that the facts found by the district court can serve as
independent support for the injunction, even without application of the old general rule.
This court cannot express a position on that argument. If we were to weigh the
evidence ourselves to reach a conclusion on injunctive relief, we would effectively be
exercising our own discretion as if we were the first-line court of equity. That role
belongs exclusively to the district court. Our task is solely to review the district court’s
decisions for an abuse of discretion. See eBay, 126 S. Ct. at 1839 (“The decision to
grant or deny permanent injunctive relief is an act of equitable discretion by the district
court, reviewable on appeal for abuse of discretion.”). Accordingly, the permanent
injunction is vacated. On remand, the district court should reconsider the four-factor
test as propounded by the Supreme Court’s decision in eBay as to whether or not an
injunction should issue.
III. CONCLUSION
The district court’s claim construction and its findings of infringement and
willfulness are affirmed. The permanent injunction is vacated and remanded.
AFFIRMED-IN-PART, VACATED-IN-PART, AND REMANDED
No costs.
2006-1260, -1437 19
United States Court of Appeals for the Federal Circuit
2006-1260, -1437
ACUMED LLC,
Plaintiff-Appellee,
v.
STRYKER CORPORATION, STRYKER SALES CORPORATION,
STRYKER ORTHOPAEDICS and HOWMEDICA OSTEONICS CORPORATION,
Defendants-Appellants.
MOORE, Circuit Judge, dissenting.
I agree with the majority’s holding in all respects save one. I write separately to
voice my disagreement with the majority's holding that the district court properly
construed “transverse holes” in claim 1 of the ’444 patent to mean “holes across the butt
portion of the nail.” Because the majority concludes that the district court’s claim
construction was proper, it affirms the court’s finding of literal infringement. From that
decision, I respectfully dissent.
At the outset, I note that I am troubled by the district court’s clear reliance on a
common English language dictionary, which was published ten years after the ’444
patent issued to construe the term “transverse holes.” During the claim construction
hearing, the court explained that the dictionary would be “an aid to our work.” The court
not only used the dictionary as an “aid,” but actually utilized the dictionary definitions as
the starting point when defining each of the disputed claim terms. 1 Moreover, the court
seemed to disregard the briefs in favor of off-the-cuff attorney argument during claim
construction. In fact, when Stryker argued that Acumed’s attorneys were changing their
claim construction during the course of the hearing, the district court responded: “Let’s
not worry about changing. I’m going to keep you all focused right on the task at hand. I
don’t care what happened before today. I care what’s going on here.” After hearing
arguments from the parties regarding the disputed claim terms and on the
appropriateness of the dictionary definitions, the district court resolved each issue orally
during the hearing. One week later, the court issued a one-page formal Order on Claim
Construction that simply reiterated the court’s oral rulings. Acumed LLC v. Stryker
Corp., No. 04-cv-513-br (D. Or. Oct. 14, 2004).
While I acknowledge that there are not formal requirements for a district court’s
methodologies when conducting claim construction hearings and issuing related orders,
I raise this concern because I believe the district court’s methodology led it astray from
determining the “the meaning that the term [“transverse holes”] would have to a person
of ordinary skill in the art . . . in the context of the entire patent, including the
specification.” Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc).
When one properly begins this claim construction inquiry with the intrinsic evidence,
1
It should be noted that the claim construction hearing in this case occurred
before this court’s en banc decision in Phillips v. AWH Corp., 415 F.3d 1303, 1313
(Fed. Cir. 2005). Thus, the district court may have been following the methodology
described in Texas Digital Systems, Inc. v. Telegenix, Inc., 308 F.3d 1193, 1201-02
(Fed. Cir. 2002), which relied heavily on the use of dictionaries to ascertain the plain
meaning of a claim term. After our Phillips decision, which clarified that the Texas
Digital approach was not appropriate, the plaintiff asked the district court here to
reconsider her claim construction, but that request was denied.
2006-1260, -1437 2
rather than dictionary definitions, it is evident that the district court’s construction of
“transverse holes” is in error.
With respect to the claim term “transverse holes,” the district court utilized the
dictionary to first determine that a “hole” is “an opening through something.” The district
court then referred to the dictionary and found two definitions for the term “transverse”:
“(1) acting, lying, or being across: set crosswise; (2) made at right angles to the anterior-
posterior axis of the body.” The district court concluded that we should construe the
claim term in accordance with the broader of the two dictionary definitions 2 because
there is no express disavowal of claim scope in the specification. This approach was
specifically rejected by this court sitting en banc in Phillips, 415 F.3d at 1320, and we
have continued to reject this approach to claim construction. See On Demand Mach.
Corp. v. Ingram Indus., Inc., 442 F.3d 1331, 1340 (Fed. Cir. 2006).
In accordance with Phillips, the interpretive inquiry should begin not with a
dictionary definition, but with the patent itself, to ascertain what an ordinarily skilled
artisan reading the patent would understand the claim term to mean. Phillips, 415 F.3d
at 1321. The intrinsic evidence provides no support for the broader of the two dictionary
definitions set forth above (i.e., that “transverse” means “acting, lying, or being across;
set crosswise”), but fully supports the narrower definition (i.e., that “transverse” means
“made at right angles to the anterior-posterior axis of the body”). Each of the eight
transverse holes described in the specification are specifically described as being
perpendicular. Id. at col.2 ll.57-59 (describing “a plurality of transverse holes, each of
2
The court emphasized that the broader definition appeared as the
“number one” definition in Webster’s dictionary. It should be noted, however, that this
order is not indicative of importance or primacy, but merely reflects historical usage.
MERRIAM-WEBSTER’S COLLEGIATE DICTIONARY (11th ed. 2003) 19a (“Order of Senses”).
2006-1260, -1437 3
which is defined on a respective axis intersecting the nail axis 22, and perpendicular to
the portion of the nail axis at the butt portion 14 of the nail”); col.3 ll.1-3 (“transverse
hole 44a is oriented . . . perpendicular to the nail axis 22”); col.3 ll.9-11 (“the distal holes
are . . . perpendicular to the butt end portion of the nail axis”) (emphases added). The
majority suggests that the use of both words “implies a difference between the words
‘perpendicular’ and ‘transverse.’” Maj. Op. at 11. The majority contends that if
transverse was meant to be construed as perpendicular, “the patentee would not have
needed to clarify that these holes, in addition to being transverse, were perpendicular to
the nail axis.” Id. I disagree. First, the patentee used the two words to clearly specify
which of the definitions of transverse applied to his invention; the purpose of using the
word “perpendicular” was to further describe what the inventor meant by the term
“transverse,” not to distinguish it as the majority suggests. Second, to say that
something is perpendicular also requires mention of a reference plane or line to which
the object is located at a right angle. Here, the patent specification limits the discussion
of “transverse holes” to holes having an axis perpendicular with respect to the nail axis
at the butt portion. ’444 patent, col.2 ll.56-59. That was the point of using the word
perpendicular in the specification. Thus, by utilizing the word “transverse,” the patentee
did not need to repeat in the claim that each hole was perpendicular to the nail axis at
the butt portion.
The specification describes “three sets of transverse holes.” Id. at col.2 l.62.
With reference to Figures 1 and 2 of the patent, reproduced below, the first set includes
four proximal transverse holes (44a-44d), the second set is one intermediate transverse
hole (46), and the third set includes three distal transverse holes (48a-48c). Each of
2006-1260, -1437 4
these eight holes is then described and shown in the accompanying figures as being
perpendicular to the nail axis 22. Id. at col.2 l.56-col.3 l.11. Most importantly, the
specification states that “a plurality of transverse holes each of which is defined on a
respective axis intersecting the nail axis 22, and perpendicular to the portion of the nail
axis at the butt portion 14 of the nail.” Id. at col.2 ll.56-59 (emphases added). Thus, the
specification limits each of the transverse holes by the common characteristic that each
has an axis perpendicular to the nail axis at the butt portion.
There is not a single non-perpendicular, “transverse” hole shown or described in
the patent. Construing “transverse” to include something other than perpendicular—in
spite of the repeated, narrow usage of that term in the specification— would provide
patent coverage that is broader than what the inventor actually invented and disclosed
in his specification, which clearly should have been the starting point for claim
construction. Smith v. Snow, 294 U.S. 1, 14, (1935) (stating “if the claim were fairly
susceptible of two constructions, that should be adopted which will secure to the
patentee his actual invention”). Since Phillips, we have repeatedly rejected the concept
of construing claim terms to have meanings broader than the meaning derived from the
intrinsic evidence. For example, in Nystrom v. Trex, Co. this court stated:
[i]n the absence of something in the written description and/or prosecution
history to provide explicit or implicit notice to the public—i.e., those of
ordinary skill in the art—that the inventor intended a disputed term to
cover more than the ordinary and customary meaning revealed by the
context of the intrinsic record, it is improper to read the term to encompass
2006-1260, -1437 5
a broader definition simply because it may be found in a dictionary,
treatise, or other extrinsic source.
424 F.3d 1136, 1145 (Fed. Cir. 2005); see also Primos, Inc. v. Hunter’s Specialties, Inc.,
451 F.3d 841, 845, 847-48 (Fed. Cir. 2006) (affirming district court’s claim construction
after district court rejected dictionary definition that was broader and inconsistent with
the use of the claim term in the patent at issue); Old Town Canoe Co. v. Confluence
Holdings Corp., 448 F.3d 1309, 1318 (Fed. Cir. 2006) (patentee is “not entitled to a
claim construction divorced from the context of the written description and prosecution
history”); Atofina v. Great Lakes Chem. Corp., 441 F.3d 991, 996 (Fed. Cir. 2006)
(quoting Free Motion Fitness, Inc. v. Cybex Int’l, Inc., 423 F.3d 1343, 1348-49 (Fed. Cir.
2005) for the proposition that “in those circumstances where reference to dictionaries is
appropriate, the [court’s] task is to scrutinize the intrinsic evidence in order to determine
the most appropriate definition” (emphasis added)); In re Johnson, 435 F.3d 1381, 1384
(Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1303 for the proposition that “[i]t is well
established that dictionary definitions must give way to the meaning imparted by the
specification”); Network Commerce, Inc. v. Microsoft Corp., 422 F.3d 1353, 1359-60
(Fed. Cir. 2005) (rejecting proposed construction of the term “download component”
based on the combination of two dictionary definitions as untenable “in light of the
specification”).
Patent scope should be coextensive with what the inventor invented as
evidenced by what is disclosed in the patent specification. Netword, LLC v. Centraal
Corp., 242 F.3d 1347, 1352 (Fed. Cir. 2001) (stating that the claims should not “enlarge
what is patented beyond what the inventor has described as the invention”); Renishaw
PLC v. Marposs Societa' per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998) (“The
2006-1260, -1437 6
construction that stays true to the claim language and most naturally aligns with the
patent's description of the invention will be, in the end, the correct construction.”). Thus,
where, as here, the intrinsic evidence clearly provides one meaning for the term
“transverse,” it is inappropriate to give that term a broader interpretation, particularly
where the only support for the broader interpretation is extrinsic evidence—in this case,
a dictionary (which supports the narrower construction as well).
Moreover, the district court’s interpretation of “hole,” which neither party is
challenging, makes the majority’s interpretation of “transverse” redundant and
nonsensical. The court found that the word “‘holes’ in the phrase ‘defining a plurality of
at least three transverse holes,’ means openings through the butt portion of the nail.”
Claim Construction Order, at 1. This makes sense in the context of orthopedic implants,
because a hole is necessarily through the part, which in the case of an intramedullary
nail is to accept a screw. Here, the majority’s definition of “transverse” as “being
across” is redundant when read together with the definition of holes. It makes the
phrase “transverse holes” mean “openings through across the butt portion of the nail.”
The majority’s claim construction thus impermissibly renders the claim term “transverse”
meaningless, a methodology that this court has repeatedly denounced. Merck & Co. v.
Teva Pharms. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005) (“A claim construction
that gives meaning to all the terms of the claim is preferred over one that does not do
so.”); see also Bicon, Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006); Cross
Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1307 (Fed. Cir.
2006-1260, -1437 7
2005). Only if “transverse” requires perpendicularity does each claim term have a
distinct meaning. 3
That “transverse” means perpendicular in direction is further supported by other
intrinsic evidence, namely, other patent references cited during prosecution of the ’444
patent. For example, U.S. Patent No. 4,475,545, entitled “Bone Nail,” discloses a pair
of holes “passing through the nail in transverse relation to its longitudinal direction and
both axes of the said both pairs of holes being located in different planes extending in
transverse direction relative to the longitudinal direction of the nail.” ’545 patent,
Abstract. The first hole is defined by the nail entrance 8’ and exit 8”. The second distal
hole is defined by the nail entrance 9’ and exit 9”. As shown in Figures 4 and 5, both of
these holes are perpendicular to the longitudinal axis of the nail at the distal portion.
The hole axes are similarly described as being located in a plane “normally extending
relative to the longitudinal axis of the nail.” ’545 patent, col.3 ll.45-46. Thus, the usage
of “transverse” in the ’545 patent is consistent with the definition requiring
perpendicularity.
The narrower definition of transverse is also more consistent with extrinsic
evidence that demonstrates how those skilled in the art would understand the term.
First, in another patent application filed within a year of the issue date of the ’444 patent,
the ’444 patent’s inventor, Randall Huebner, uses the word “transverse” in a way that
clearly denotes perpendicularity in direction. There, as here, Mr. Huebner describes a
3
Claim 22, which indirectly depends from independent claim 19, further
illustrates this point. Claim 22 recites “a plurality of second securement holes” in the
butt portion of the claimed nail. These holes, like the transverse holes in claim 1, are
required to go through the butt portion of the nail. But unlike the transverse holes, the
securement holes need not be defined by an axis perpendicularly situated with
respected to the nail axis at the butt portion.
2006-1260, -1437 8
“transverse hole” extending through a shaft, stating “the head [of the shaft] includes a
hole extending therethrough in a direction generally transverse to the axis of the shaft.”
U.S. Patent No. 5,697,934, col.2 ll.45-46 (filed Dec. 2, 1996); see also id. at col.3 l.66-
col.4 l.1 (describing another hole as “formed through head 50 with a central axis 54
generally transverse to elongate axis 38 of shaft 32”). Mr. Huebner’s use of transverse
in that application clearly shows a directional requirement implicit in the term
“transverse” that is not encompassed in the broader definition accepted by the majority.
Next, although the district court chose to rely exclusively on a general dictionary that
was not contemporaneous with the patent, technical dictionaries, including one highly
relevant to the field of orthopedic implants at the time the patent issued, define
“transverse” as referring to a perpendicular direction. Dorland’s Medical Dictionary
defines transverse as “placed crosswise; situated at right angles to the long axis of a
part.” DORLAND’S ILLUSTRATED MEDICAL DICTIONARY 1735 (28th ed. 1994).
Thus, the intrinsic and extrinsic evidence establish that the ’444 patent’s use of
“transverse” is only consistent with the narrower definition rejected by the district court
and the majority opinion. The only passage of the specification which the majority relies
upon to support its broader interpretation of “transverse holes” is the language “[t]he
predictability of fracture modes makes the orientation of holes in the illustrated
embodiment suitable in most cases.” The majority suggests that this language “admits
that the disclosed perpendicular hole orientation may not always be ideal.” Maj. Op. at
12. I respectfully submit that the majority has taken the language out of context and
imparted a meaning to it that is not correct. The entire paragraph wherein this sentence
is found is discussing Figure 4 and the orientation of the holes relative to each other
2006-1260, -1437 9
around the circumference of the nail, not relative to the nail axis at the butt portion 22.
That paragraph focuses on the need to orient the screws “to prevent rotation or axial
movement of the nail” and discusses that the screws should be located on “opposite
sides of the nail.” ’444 patent, col.4 ll.61-65. Hence, when the very next sentence of
the specification refers to the “orientation of the holes,” ’444 patent, col.4 ll.65-67, it is
doing so in the context of their placement around the nail.
Tellingly, the majority opinion offers no other support—intrinsic or extrinsic—for
its construction, and in fact, offers no explanation at all for its conclusion that “the claim
language covers all ‘transverse’ holes—a word that does not necessarily imply right
angles.” 4 Maj. Op. at 11. What, if not the specification, is the majority using to
determine the plain meaning of this term? The district court based its conclusion
regarding the plain meaning of transverse on Webster’s Dictionary, which it
acknowledged supported both the definition across and perpendicular. In the present
case, as in Nystrom, I see no reason why we should adopt one, broader, plain meaning
of the term “transverse” when there is another plain meaning that is completely
consistent with the intrinsic evidence. When one begins with the patent specification, in
my opinion, there is no doubt which of the two meanings of “transverse” is correct.
The majority attempts to distinguish the Nystrom case as a case in which the
patentee “sought to have [the] claim [at issue] ‘broaden[ed] . . . to encompass relatively
obscure definitions that are not supported by the written description or prosecution
history.’” Maj. Op. at 14 (quoting Nystrom, 424 F.3d at 1145). The majority suggests
4
The majority’s observation that “[n]owhere in the specification or the
prosecution history do the patentees criticize or distinguish tilted, non-perpendicular
holes,” Maj. Op. at 12, only underscores the absence of a written description broad
enough to support the meaning that they attribute to the claim term “transverse.”
2006-1260, -1437 10
that in Nystrom “[w]e refused to impose a construction broader than the term’s ordinary
meaning.” Maj. Op. at 14. In this case, the Webster’s Dictionary which provided the
basis for the district court’s determination of the term’s ordinary meaning included two
definitions for the term transverse (across and perpendicular). Even the district court
acknowledged both definitions. In this case, we must choose between two plain
meanings of the word “transverse.” As in Nystrom, we should interpret the claim term
by reference to the specification and refuse to read the term “transverse” as
encompassing meanings unsupported by even a modicum of intrinsic evidence;
otherwise we give the patentee more than what was invented and disclosed to the
public.
Even if I did not read the intrinsic record to clearly support the narrower of the
two plain and ordinary meanings of the term “transverse,” I would still be compelled by
our precedent to conclude that the narrower meaning applies to this limitation. In
Athletic Alternatives, Inc. v. Prince Manufacturing, Inc., this court was presented with a
case in which there were two plain and ordinary meanings of a term. 73 F.3d 1573,
1579 (Fed. Cir. 1996). The court was at an impasse after concluding that the
specification, the prosecution history and the doctrine of claim differentiation did not
provide guidance on what the plain meaning of the claim term at issue was. Id. at 1579-
81 (concluding that “the specification is completely silent with regard to the meaning” of
the claim term; that there were “[t]wo strong and contradictory interpretative strands
run[ning] through the patent’s prosecution history . . . [that] together . . . are
irreconcilable;” and that after analyzing claim differentiation “we [were] left with two
2006-1260, -1437 11
equally plausible meanings of Claim 1”). Faced with such a conundrum, we resorted to
the statutory basis for the claims themselves, 35 U.S.C. § 112, ¶ 2, and concluded that
[w]ere we to allow [the patentee] successfully to assert the broader of the
two senses of [the claim term] against Prince, we would undermine the fair
notice function of the requirement that the patentee distinctly claim the
subject matter disclosed in the patent from which he can exclude others
temporarily. Where there is an equal choice between a broader and a
narrower meaning of a claim, and there is an enabling disclosure that
indicates that the applicant is at least entitled to a claim having the
narrower meaning, we consider the notice function of the claim to be best
served by the narrower meaning.
Id. at 1581.
Even if the specification was completely silent on whether the transverse holes
had to be perpendicular to the nail axis at the butt portion of the nail—which, as
discussed above, I do not believe it is—we must, according to our precedent, adopt the
narrower of the two plain and ordinary meanings of the word “transverse.” Accord
Athletic Alternatives, 73 F.3d at 1581. The majority’s rejection of Stryker’s claim
construction position as “an improper attempt to read a feature of the preferred
embodiment into the claims as a limitation,” fails to identify any language in the
specification that demonstrates that the patentee contemplated anything more than
transverse holes that are perpendicular to the nail axis at the butt portion. Thus, even
adopting the majority’s view of the intrinsic record, I cannot agree with their conclusion.
Based on the foregoing, I conclude that the district court’s construction of the
term “transverse holes” was improper and should be reversed. The term “transverse
holes” in claim 1 of the ’444 patent should be interpreted as “openings through the butt
portion of the nail oriented perpendicularly with respect to the longitudinal axis of the
butt portion.” Because the uncontested evidence shows that the alleged infringing
2006-1260, -1437 12
products do not literally infringe claim 1 of the ’444 patent as properly construed, a
remand on that issue would not be necessary. Acumed could, however, argue that
Stryker’s T2 PHN products infringe claim 1 of the ’444 patent under the doctrine of
equivalents. 5 Accordingly, I would reverse the judgment of literal infringement and
remand for proceedings with respect to infringement under the doctrine of equivalents.
5
Although Stryker argues that Acumed waived the doctrine of equivalents
with respect to this claim element because it did not assert that theory at trial under the
court’s claim construction, that statement is incorrect. See Exxon Chem. Patents, Inc.
v. The Lubrizol Corp., 137 F.3d 1475, 1479 (Fed. Cir. 1998) (determining that plaintiff
did not waive equivalents arguments where the court’s claim construction made a
doctrine of equivalents argument under any other claim construction “moot”).
2006-1260, -1437 13