Acumed LLC v. Stryker Corporation

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