United States Court of Appeals for the Federal Circuit
05-1415
CROSS MEDICAL PRODUCTS, INC.,
Plaintiff-Appellee,
v.
MEDTRONIC SOFAMOR DANEK, INC.
and MEDTRONIC SOFAMOR DANEK USA, INC.,
Defendants-Appellants.
Mark A. Finkelstein, Latham & Watkins, LLP, of Costa Mesa, California, argued
for plaintiff-appellee. With him on the brief were Bruce D. Kuyper and Jordan B.
Kushner, of Los Angeles, California.
Dirk D. Thomas, Robins, Kaplan, Miller & Ciresi L.L.P., of Washington, DC,
argued for defendants-appellants. With him on the brief were Robert A. Auchter,
André J. Bahou, Jan M. Conlin and Munir R. Meghjee.
Appealed from: United States District Court for the Central District of California
Judge Gary L. Taylor
United States Court of Appeals for the Federal Circuit
05-1415
CROSS MEDICAL PRODUCTS, INC.,
Plaintiff-Appellee,
v.
MEDTRONIC SOFAMOR DANEK, INC.
and MEDTRONIC SOFAMOR DANEK USA, INC.,
Defendants-Appellants.
___________________________
DECIDED: March 20, 2007
___________________________
Before RADER, SCHALL, and PROST, Circuit Judges.
Opinion of the court filed PER CURIAM. Concurring opinion filed by RADER, Circuit
Judge.
PER CURIAM.
This case is the second appeal to this court in a patent litigation between
Cross Medical Products, Inc. (Cross Medical) and Medtronic Sofamor Danek, Inc.
(Medtronic). Cross Medical accuses Medtronic's polyaxial screws of infringing U.S.
Patent No. 5,474,555 (the '555 patent). In the prior appeal, this court set aside a
permanent injunction issued by the United States District Court for the Central District of
California and reversed the summary judgment of infringement and validity of claim 5 of
the '555 patent in favor of Cross Medical. See Cross Med. Prods., Inc. v. Medtronic
Sofamor Danek, Inc., 424 F.3d 1293 (Fed. Cir. 2005) (First Appeal). In this appeal, the
district court issued another permanent injunction after Medtronic redesigned its
polyaxial screws in an attempt to avoid the '555 patent. Cross Med. Prods., Inc. v.
Medtronic Sofamor Danek, Inc., SA CV 03-110-GLT, slip op. at 2 (C.D. Cal. April 8,
2005) (Trial Court Opinion). The court determined that claim 5 of the '555 patent was
infringed under the doctrine of equivalents by Medtronic's redesigned screws, but that
claim 7 of the '555 patent was not infringed by either the original or redesigned screws.
Id., slip op. at 14, 20. Notably, the district court did not have the benefit of this court’s
opinion in the First Appeal before issuing the second permanent injunction.
Because Medtronic's redesigned polyaxial screws do not infringe the asserted
claims literally or under the doctrine of equivalents, this court reverses the grant of
summary judgment of infringement of claim 5. On the redesigned screws, the district
court should grant Medtronic's motion for summary judgment of non-infringement. The
remaining issues, which involve the validity of claim 7 and infringement of this claim by
Medtronic's original polyaxial screws require reconsideration in light of this court's prior
opinion in the First Appeal. Accordingly, this court reverses-in-part and vacates-in-part
the district court's findings on the remaining issues and remands.
I
This litigation began on February 4, 2003, when Cross Medical sued Medtronic
for infringement of the '555 patent. Medtronic denied infringement and counterclaimed
seeking a declaration of non-infringement and invalidity. On September 28, 2004, the
district court issued a permanent injunction after granting Cross Medical's motions for
partial summary judgment on validity and infringement of claim 5. Medtronic
immediately filed an appeal with this court despite ongoing proceedings at the district
court. First Appeal, 424 F.3d at 1299.
05-1415 2
While the first appeal was pending, Medtronic redesigned its polyaxial screws in
an attempt to avoid infringement of claim 5. In response, Cross Medical asserted that
the redesigned screws still infringe claim 5 and that Medtronic's original and redesigned
screws infringe claim 7.
On the claim 5 issue, the district court found that Medtronic's redesigned screws
infringe under the doctrine of equivalents. Trial Court Opinion, slip op. at 22. In
reaching this finding, the district court determined that a narrowing amendment to claim
5 during prosecution was only "tangentially related" to the accused equivalent and thus
not subject to an estoppel under Festo. Id., slip op. at 8-11; see Festo Corp. v.
Shoketsu Kinzoku Kogyo Kabushiki Co., 344 F.3d 1359 (Fed. Cir. 2003) (en banc).
The district court also found that none of the accused screws (original or redesigned)
infringe claim 7, Trial Court Opinion, slip op. at 14-20, but upheld the validity of this
claim in the face of similar challenges Medtronic had previously raised with respect to
claim 5, Trial Court Opinion, slip op. at 20-22. Having concluded Medtronic's
redesigned screws infringe claim 5, the district issued a second permanent injunction.
Medtronic filed a second appeal with this court, which is the basis for the present
appeal.
After Medtronic submitted its initial brief in this appeal, this court issued its
opinion overturning the first permanent injunction. See First Appeal, 424 F.3d 1293. In
the First Appeal, which involved claim 5 and Medtronic's original polyaxial bone screws,
this court (1) affirmed the district court's construction of three limitations; (2) modified its
construction of two limitations; (3) reversed its grant of summary judgment on
infringement; (4) affirmed its grant of summary judgment on validity for indefiniteness
05-1415 3
and anticipation; and (5) reversed its grant of summary judgment on validity for
obviousness due to factual issues on the motivation to combine various references. Id.
at 1297.
This appeal overlaps considerably with the issues in the First Appeal. Because
the First Appeal remanded several issues common to both injunctions, the parties agree
that the second permanent injunction cannot stand. However, the parties dispute what
issues, if any, remain for decision in this second appeal. Cross Medical asserts that the
only issues remaining are: (1) whether the redesigned Medtronic screw meets the
"thread-depth" limitation of claim 5 literally or under the doctrine of equivalents; and (2)
whether the district court's grant of summary judgment of non-infringement of claim 7
conflicts with this court’s findings with respect to claim 5 in the First Appeal. Br. of Pl.-
Appellee, 3, Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., No. 05-1415
(Fed. Cir. 2006) (Appellee Brief). Of these two issues, Medtronic argues that only the
claim 5 issue is properly before the court. According to Medtronic, this court lacks
jurisdiction to entertain the claim 7 issue because Cross Medical did not file a cross-
appeal to challenge the district court's adverse holdings with respect to this claim.
Reply Br. of Defs.-Appellants, 16-24, Cross Med. Prods., Inc. v. Medtronic Sofamor
Danek, Inc., No. 05-1415 (Fed. Cir. 2006) (Reply Brief).
05-1415 4
II
With that backdrop, this court turns first to the claim 5 issue. The district court
granted Cross Medical a summary judgment that Medtronic's redesigned screws
infringe. "This court reviews the district court's grant or denial of summary judgment
under the law of the regional circuit." MicroStrategy, Inc. v. Bus. Objects, S.A., 429
F.3d 1344, 1349 (Fed. Cir. 2005) (citation omitted). The United States Court of Appeals
for the Ninth Circuit reviews a grant of summary judgment without deference. Leonel v.
Am. Airlines, Inc., 400 F.3d 702, 708 (9th Cir. 2005). Thus, "[i]n the context of summary
judgment, this court reviews de novo the district court’s determination that there is no
genuine issue as to any material fact regarding infringement." Wilson Sporting Goods
Co. v. Hillerich & Bradsby Co., 422 F.3d 1322, 1326 (Fed. Cir. 2006) (citing MEMC
Elec. Materials v. Mitsubishi Materials Silicon Corp., 420 F.3d 1369, 1373 (Fed. Cir.
2005)).
Having already concluded that Medtronic's original screws infringe claim 5, the
district court examined the redesigned screws for appropriation of the "thread depth"
limitation as well as the rest of the claimed features. See Trial Court Opinion, slip op. at
6. Specifically, claim 5 reads:
5. A fixation device for the posterior stabilization of one or more bone
segments of the spine, comprising:
at least two anchors and an elongated stabilizer comprising a rod having a
diameter and a longitudinal axis, said anchors each comprising anchoring
means which secure said anchors to said bone segment and an anchor
seat means which has a lower bone interface operatively joined to said
bone segment and an anchor seat portion spaced apart from said bone
interface including a channel to receive said rod; and
securing means which cooperate with each of said anchor seat portions
spaced apart from said bone interface and exterior to the bone relative to
05-1415 5
said elongated rod, said seat means including a vertical axis and first
threads which extend in the direction of said vertical axis toward said lower
bone interface to a depth below the diameter of the rod when it is in the
rod receiving channel, and said securing means including second threads
which cooperate with the first threads of the seat means to cause said rod
to bear against said channel through the application of substantially equal
compressive forces by said securing means in the direction of the vertical
axis and applied on either side along said longitudinal axis of said channel.
'555 patent, col. 8 ll. 33-57 (emphasis added). On literal infringement, the district court
determined that Medtronic's redesign, which "replaces the threads below the top of the
rod with a groove or 'undercut[,]'" lacks thread forms and thus "does not literally meet
the limitation requiring 'threads' extending below the top of the rod." Trial Court Opinion,
slip op. at 6-7.
As described in the specification, the thread depth limitation corresponds to the
anchor seat 23 shown in Figures 3 and 6 of the '555 patent and the threading thereon:
The embodiments of Figures 3 and 6 show that the threads on the anchor seat 23
extend to a depth below the top surface of the rod 18 as claimed. Notably, this thread
depth requirement was not in the '555 patent's original application. Rather, the originally
filed claim simply called for a "seat means including a vertical axis and first threads"
without any particular limitation about the extent of the threading. The Examiner
rejected this original claim, however, for lack of antecedent basis and lack of support in
the specification (35 U.S.C. § 112, ¶¶ 1-2), for obviousness type double patenting over
05-1415 6
U.S. Patent No. 5,360,431, and for anticipation (35 U.S.C. § 102(b)) over U.S. Patent
No. 4,805,602 (the '602 patent). In response, the Applicant amended the claim
(originally numbered as claim 15) to recite:
15. (Amended) A fixation device for the posterior stabilization of one
or more bone segments of the spine, comprising:
....
securing means which cooperate with each of said anchor seat portions
spaced apart from said bone interface and exterior to the bone relative to
said elongated rod, said seat means including a vertical axis and first
threads which extend in the direction of said vertical axis toward said lower
bone interface to a depth below the diameter of the rod when it is in the
rod receiving channel, and said securing means including second threads
which cooperate with the first threads of the seat means to cause said rod
to bear against said channel through the application of substantially equal
compressive forces by said securing means in the direction of the vertical
axis and applied on either side along said longitudinal axis of said channel.
In the same filing, the Applicant also amended the specification to address the
35 U.S.C. § 112, ¶ 1 rejection and submitted a terminal disclaimer to address the
double patenting rejection. Thereafter, the Patent Office allowed the claim.
Medtronic apparently focused on this prosecution history in attempting to design
around claim 5. Specifically, as noted by the district court, Medtronic altered its original
screw design to terminate the corresponding threads at a position above the rod
diameter. The district court agreed with Medtronic that the redesign took their screws
outside the literal scope of claim 5. Trial Court Opinion, slip op. at 7 ("The new design
does not literally meet the limitation requiring 'threads' extending below the top of the
rod."). However, the district court still found the screws infringe claim 5 under the
doctrine of equivalents' function-way-result test. Id., slip op. at 11. In so holding, the
district court rejected Medtronic’s argument that a Festo presumption barred application
of the doctrine of equivalents:
05-1415 7
[T]he rationale behind the amendment [to claim 5] was to adequately
describe and enable a device, under § 112, in which the securing means
could secure the rod without the use of a cap. The applicant was not
attempting to overcome prior art using an undercut, and the amendment
did not relate to an undercut. Therefore, the rationale was no more than
tangentially related to Medtronic's new screw design, in which threads
extend part of the way toward the rod and an undercut extends to a depth
below the top of the rod. Medtronic's new screw design is "beyond a fair
interpretation of what was surrendered." Festo, 535 U.S. at 738.
Trial Court Opinion, slip op. at 10. Medtronic challenges this reasoning and seeks
summary judgment of non-infringement both under literal infringement and equivalents.
A. Literal Infringement
Turning first to literal infringement, Medtronic replaced the threading that extends
below the diameter of the rod in its original screws with an undercut that does not
engage any surface on the corresponding set screw. Cross Medical characterizes this
undercut as effectively a thread because it constitutes the root of an incomplete thread.
The district court considered this argument by Cross Medical and properly rejected it as
stretching the meaning of "thread" too far. Id., slip op. at 7 (rejecting Cross Medical's
argument that "the undercut is an 'effective thread,' which the parties agree is a
complete thread, plus portions of an incomplete thread that are fully formed at the root
but not at the crest"). As explained by the district court, the undercut in Medtronic's
screws is not a thread because no thread forms in the undercut to join the flanks of
adjacent thread forms above the diameter of the rod. Id. Simply because the undercut
appears adjacent to a thread form does not convert that independent structure into a
thread. Thus, the district court properly found that this limitation only can be satisfied, if
at all, under the doctrine of equivalents.
B. Infringement by Equivalents
05-1415 8
Prosecution history estoppel prevents a patentee from recapturing under the
doctrine of equivalents subject matter surrendered during prosecution to obtain a
patent. See Festo, 344 F.3d at 1365 (citing Festo Corp. v. Shoketsu Kinzoku Kogyo
Kabushiki Co., 535 U.S. 722, 741 (2002) (Festo VIII)). Indeed, by surrendering subject
matter, a narrowing amendment classically invokes the doctrine. In this case, the
patentee narrowed claim 5 to address a § 112 rejection. An amendment made to
comply with § 112 may give rise to estoppel. Honeywell Int'l Inc. v. Hamilton
Sundstrand Corp., 370 F.3d 1131, 1142 (Fed. Cir. 2004) (en banc) ("[I]f a § 112
amendment is necessary and narrows the patent's scope—even if only for the purpose
of better description—estoppel may apply. A patentee who narrows a claim as a
condition for obtaining a patent disavows his claim to the broader subject matter,
whether the amendment was made to avoid the prior art or to comply with § 112.").
Although these circumstances create a presumption of estoppel under Festo, the
patentee may still rebut that presumption. Rhodia Chimie v. PPG Indus. Inc., 402 F.3d
1371, 1382 (Fed. Cir. 2005) ("The patentee may rebut that presumption by showing that
the alleged equivalent was unforeseeable at the time the amendment was made, that
the alleged equivalent was tangential to the purpose of the amendment, or that there
was some other reason suggesting that the patentee could not reasonably be expected
to have described the insubstantial substitute in question."). In this case, the district
court determined that Cross Medical successfully overcame the Festo presumption by
demonstrating that the amendment bore no more than a tangential relationship to the
equivalent.
05-1415 9
On appeal, Cross Medical argues that the amendment to claim 5 was tangential
or, in the alternative, that it was unforeseeable. This court reaffirms the principle that
the tangential relation criterion for overcoming the Festo presumption is very narrow and
finds that neither the narrow tangential rebuttal principle nor the foreseeability principle
applies to this case.
As discussed in the Festo opinion, the tangentially related
criterion requires a patentee to demonstrate that "the rationale underlying
the narrowing amendment [bore] no more than a tangential relation to the
equivalent in question." Festo VIII, 535 U.S. at 740, 122 S. Ct. 1831. In
other words, this criterion asks whether the reason for the narrowing
amendment was peripheral, or not directly relevant, to the alleged
equivalent.
Festo, 344 F.3d at 1369 (quoting Festo VIII, 535 U.S. at 740). The Festo court further
stated: "Although we cannot anticipate the instances of mere tangentialness that may
arise, we can say that an amendment made to avoid prior art that contains the
equivalent in question is not tangential; it is central to allowance of the claim." Id.
Finally, the court observed that the inquiry into whether a patentee can rebut the Festo
presumption under the "tangential" criterion focuses on the patentee's objectively
apparent reason for the narrowing amendment and that the reason "should be
discernible from the prosecution history of record, if the public notice function of a patent
and its prosecution history is to have significance." Id.
Cross Medical's reliance on Insituform Technology, Inc. v. CAT Contracting, Inc.,
385 F.3d 1360 (Fed. Cir. 2004), is misplaced. In Insituform, the invention claimed a
method of impregnating an inner layer of resin with a limitation that specified the
number and location of vacuum cups used in the method. See Id., 385 F.3d at 1368-69
(citing U.S. Patent No. 4,366,012, claims 1-4). The applicant added the number and
05-1415 10
location limitations to overcome prior art that disclosed a single vacuum source at the
end of the tube opposite the resin source. Id. at 1369. In asserting a bar on the
application of the doctrine of equivalents, the defendants argued that this narrowing
amendment "necessarily gave up coverage of any process in which the vacuum was
created at multiple vacuum sources," as in the accused processes. Id. at 1370. This
court found instead that the prosecution history showed that "the reason for the
amendment was to overcome the prior art teaching creation of a single source vacuum
at the far end of the liner." Id. In other words, an amendment distinguishing prior art
based on where the vacuum source was located was only tangentially related to an
equivalent directed at the number of vacuum sources. See Biagro W. Sales, Inc. v.
Grow More, Inc., 423 F.3d 1299, 1306 (Fed. Cir. 2005) (explaining that, in Insituform,
"the reason for the amendment and the alleged equivalent involved different aspects of
the invention—the location of the vacuum source relative to the resin versus the number
of vacuum cups" (citing Insituform, 385 F.3d at 1370)).
In Insituform, this court stated that in an analysis to determine if an amendment is
tangential, "[t]he question we must address is 'whether the reason for the narrowing
amendment was peripheral, or not directly relevant, to the alleged equivalent.'" 385
F.3d at 1370 (citing Festo, 344 F.3d at 1365). Accordingly, this court has addressed the
relationship between the narrowing amendment and the equivalent in broad terms: "[A]n
amendment made to avoid prior art that contains the equivalent in question is not
tangential." Rhodia Chimie, 402 F.3d at 1383. This court also added, "[i]t does not
follow, however, that equivalents not within the prior art must be tangential to the
amendment." Id. Indeed, in Rhodia, this court ultimately determined that the applicant
05-1415 11
"surrendered the range between its original claim and its amended claim and is
therefore estopped from asserting . . . the doctrine of equivalents." Id.
In this case, the prosecution history of the '555 patent shows a narrowing
amendment that also "contains the equivalent in question." Id. The '555 patent
Applicant explained to the Examiner that:
the claims have . . . been amended to define the anchor seat means
having a channel and threads which cooperate with the securing means
(i.e., the nut) so as to capture the stabilizer between the channel and the
securing means since the ancor [sic] seat threads extend toward the
channel to a depth below the top of the stabilizer when it is in the channel.
In other words, the prosecution history explains that the thread depth limitation was
added to capture the manner in which the stabilizer aspect of the invention operated
and thereby overcome the 35 U.S.C. § 112 rejections. Thus, the accused equivalent,
which does not include threads extending "to a depth below the top of the stabilizer" and
correspondingly does not capture this aspect of the invention relates to the amendment
as shown even by the applicant's own statements. For this reason, the district court
erred in reliance on the tangential rebuttal principle to avoid the doctrine of equivalents.
As an alternative, Cross Medical argues that the alleged equivalent was
unforeseeable at the time of the amendment and thus the Festo presumption could be
overcome with this rebuttal criterion. See Festo, 344 F.3d at 1365 (commenting that the
presumption can also be overcome "by demonstrating that 'the equivalent [would] have
been unforeseeable at the time of the [amendment]'" (quoting Festo VIII, 535 U.S. at
740-41)). To the contrary, the evidence of record clearly demonstrates that the use of
an undercut or recess, the alleged equivalent here, is an old and well known
fundamental of basic machining that was entirely foreseeable at the time of the
amendment to one of ordinary skill in the art. See, e.g., John R. Walker, Machining
05-1415 12
Fundamentals, Fundamentals Basic to Industry, at 185-86 (1981); U.S. Patent No.
5,129,900; U.S. Patent No. 5,190,543.
Even Cross Medical implicitly recognized this fact in its literal infringement
argument. Namely, Cross Medical suggests that an "undercut" was known in the art to
serve effectively as a thread. Of course, this contention also means that the ordinary
artisan would have considered an undercut as a foreseeable way to operate the
invention—meaning that the patent drafter had an obligation therefore to include an
undercut within the scope of the claim if it intended the invention to extend to that
foreseeable means of using the invention. See Ranbaxy Pharm., Inc. v. Apotex, Inc.,
350 F.3d 1235, 1241 (Fed. Cir. 2003) (holding that if an allegedly infringing product was
readily known by those of skill in the art to be equivalent to the claim limitation, "it would
have been foreseeable to literally include [it] in the claim"); see also Talbert Fuel Sys.
Patents Co. v. Unocal Corp., 347 F.3d 1355, 1359-60 (Fed. Cir. 2003). Thus, the
district court properly did not rely on unforeseeability as a rebuttal of the presumption of
surrender in the narrowing amendment. See Freedman Seating Co. v. Am. Seating
Co., 420 F.3d 1350, 1361 (Fed. Cir. 2005) (citing Sage Prods., Inc. v. Devon Indus.,
Inc., 126 F.3d 1420, 1425 (Fed. Cir. 1997)) ("[A]s between the patentee who had a clear
opportunity to negotiate broader claims but did not do so, and the public at large, it is
the patentee who must bear the cost of its failure to seek protection for [a] foreseeable
alteration of its claimed structure."); SmithKline Beecham Corp. v. Excel Pharm., Inc.,
356 F.3d 1357, 1363 (Fed. Cir. 2004) ("Usually, if the alleged equivalent represents
later-developed technology (e.g., transistors in relation to vacuum tubes, or Velcro® in
relation to fasteners) or technology that was not known in the relevant art, then it would
05-1415 13
not have been foreseeable. In contrast, old technology, while not always foreseeable,
would more likely have been foreseeable."); Glaxo Wellcome, Inc. v. Impax Labs., Inc.,
356 F.3d 1348, 1353 (Fed. Cir. 2004) (same).
C. Summary
For the foregoing reasons, this court concludes that Cross Medical cannot satisfy
its burden of overcoming the Festo presumption on either the tangentially related
criterion or the foreseeability criterion. Because Medtronic's redesigned screws do not
literally infringe claim 5 and Festo bars capturing these screws under the doctrine of
equivalents, the district court should have granted summary judgment of non-
infringement in favor of Medtronic under both literal infringement and infringement by
equivalents regarding this claim.
III
Turning next to the claim 7 infringement issue, the district court found that
"Medtronic's old and new screw designs do not infringe the limitation of claim 7 requiring
an 'anchor seat including external threads.'" Trial Court Opinion, slip op. at 17. As
discussed below, the district court properly granted summary judgment of non-
infringement of claim 7 on Medtronic's redesigned screws. However, because the
district court's grant of summary judgment of non-infringement of claim 7 on Medtronic's
original screws is called into question by this court's treatment of similar limitations in
claim 5 in the First Appeal, this court vacates this aspect of the district court's summary
judgment grant and remands for further proceedings consistent with the First Appeal.
A. Redesigned Screws
05-1415 14
While not identical to claim 5, claim 7 contains similar limitations beyond the
scope of Medtronic's redesigned screws. Specifically, claim 7 reads:
7. A device for the stabilization of one or more bone segments,
comprising:
at least two anchors and a rod having a diameter, said anchors each
comprising screw means, an anchor seat, and a nut, said anchor seat
including external threads and a channel to receive said rod and having a
rod contacting surface in the bottom of the channel and said threads
extending toward the rod contacting surface to a thread run-out, the
distance between the rod contracting surface and the thread run-out being
less than the diameter of the rod; and said nut including top and bottom
surfaces and a relatively constant diameter through bore having threads
which mate with the threads of the anchor seat and said nut being exterior
to said rod and tightening down toward the rod whereby said bottom
surface applies to compressive force to said rod.
'555 patent, col.8 l.62-col.10 l.4 (emphasis added).
Notably, the district court concluded Medtronic's redesigned screws do not meet
the limitation "said threads extending toward the rod contacting surface to a thread run-
out, the distance between the rod contacting surface and the thread run-out being less
than the diameter of the rod" for reasons similar to the literal infringement analysis of
claim 5. Trial Court Opinion, slip op. at 19. Cross Medical argues that this finding was
in error because, as argued with respect to claim 5, the undercut in Medtronic's product
purportedly constitutes an "effective thread." Having already rejected this argument,
this court affirms this aspect of the district court's grant of summary judgment in favor of
Medtronic.
B. Original Screws
Turning next to the original screws, the parties dispute whether this court has
jurisdiction to entertain this issue at all. Medtronic argues that a cross-appeal is a
necessary predicate to considering this issue and, in its absence, this court lacks
05-1415 15
jurisdiction. Cross Medical argues that this court may consider the issue as an
"alternative" basis upon which the district court could have issued its second permanent
injunction. As outlined below, this court agrees with Medtronic that it should not
address the merits of the issue but also agrees with Cross Medical that the district court
should have the opportunity to reconsider this question in light of the First Appeal.
On the jurisdictional inquiry, this court need not consider whether the district
court could have issued the second permanent injunction on some other grounds.
Rather, this court reviews the district court's judgment with an eye to whether an
alternative basis might support that decision. See Laitram Corp. v. NEC Corp., 115
F.3d 947, 954 (Fed. Cir. 1997) (commenting that a cross-appeal is unnecessary for a
party to present alternative arguments for affirmance of a trial court's decision). In this
case, the First Appeal determined that material issues of fact remain for adjudication (on
both infringement and validity) for claim 5. Those same issues apply as well to claim 7.
Thus, even if this court detected flaws in the district court's reasoning on some of the
disputed limitations, it could not uphold the district court's grant of summary judgment at
this point in the proceedings. Therefore, this court will not address the merits of Cross
Medical's theory with respect to infringement of claim 7 by Medtronic's original screws.
While this court does not address the merits of this issue, the First Appeal
certainly calls into question some of these claim 7 issues. Thus, this court agrees with
Cross Medical that this aspect of the district court's summary judgment grant must be
vacated and remanded for reconsideration in light of the First Appeal. After
reconsideration by the district court, the parties may then seek further appellate review
of these issues, if necessary.
05-1415 16
IV
The district court also determined that claim 7, like claim 5, is not anticipated,
obvious, or indefinite. In the First Appeal, this court affirmed the district court's holdings
on anticipation and indefiniteness with respect to claim 5, but held that issues of
material fact remained for adjudication with respect to obviousness. See First Appeal,
424 F.3d at 1297. Thus, for similar reasons as discussed in the First Appeal, this court
affirms the district court's grant of summary judgment of validity on anticipation and
indefiniteness with respect to claim 7, reverses its grant of summary judgment of validity
on obviousness with respect to claim 7, and remands for further proceedings.
V
In conclusion, summary judgment of non-infringement on all asserted claims
should have been entered for Medtronic with respect to the redesigned screws. The
remaining issues involving validity and infringement of claim 7 by Medtronic's original
screws requires reconsideration in light of the First Appeal. Thus this court affirms-in-
part, reverses-in-part, vacates-in-part, and remands for further proceedings consistent
with this opinion and the First Appeal.
COSTS
Each party shall bear its own costs.
AFFIRMED-IN-PART, REVERSED-IN-PART, VACATED-IN-PART, and REMANDED
05-1415 17
United States Court of Appeals for the Federal Circuit
05-1415
CROSS MEDICAL PRODUCTS, INC.,
Plaintiff-Appellee,
v.
MEDTRONIC SOFAMOR DANEL, INC.
and MEDTRONIC SOFAMOR DANEK USA, INC.,
Defendants-Appellants.
RADER, Circuit Judge, concurring.
I concur with the result in this case. I write separately to address further the
issue of prosecution history estoppel of claim 5 of U.S. Patent No. 5,474,555 (the '555
patent).
The district court found that Cross Medical successfully rebutted the presumption
of prosecution history estoppel for claim 5 of the '555 patent based on tangentiality.
Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., SA CV 03-311-GLT, slip op.
at 10 (C.D. Cal. 2005) (Trial Court Opinion). With that finding, the district court
proceeded to determine that Medtronic's redesigned screws (with internal threads that
stopped above the top of the rod) infringe under the doctrine of equivalents.
Trial Court Opinion, slip op. at 22. As noted in the majority opinion, the '555 patent
applicant specifically amended its claims in response to an examiner's rejection. The
amendment specified that the first threads extend deeper than the top of the rod
received in the channel of the seat. Majority Opinion, pp. 6-7. The examiner allowed
the application based on this amendment. Id. at 7.
This prosecution history became very important when Medtronic attempted to
design around claim 5. As this court has noted, Medtronic altered its original screw
design to terminate the corresponding threads at a position above the rod diameter. Id.
at 7. Medtronic chose this new design with an eye to the applicant's narrowing
amendment. Nonetheless, the district court determined that this narrowing amendment
to claim 5 during prosecution was only "tangentially related" to the accused equivalent
and thus not subject to an estoppel. Trial Court Opinion, slip op. at 8-11; see Festo
Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 344 F.3d 1359 (Fed. Cir. 2003) (en
banc). Thus, the district court found the screws infringe claim 5 under the doctrine of
equivalents. Trial Court Opinion., slip op. at 11.
This court made the tangential relation criterion for overcoming the Festo
presumption very narrow. Festo, 344 F.3d at 1369. Festo itself recognized that
rebuttals under the tangential principle will be rare. Id. ("[W]e cannot anticipate the
instances of mere tangentialness that may arise . . . ."). Cases in the interim have
confirmed Festo's insight; only two cases have successfully invoked the tangential
rebuttal principle in this court. See Insituform Tech. Inc. v. CAT Contracting, Inc., 385
F.3d 1360, 1368 (Fed. Cir. 2004) (holding that an amendment adding a single cup bore
no more than a tangential relation to the alleged equivalent containing multiple cups);
Primos, Inc. v. Hunter's Specialties, Inc., 451 F.3d 841, 849 (Fed. Cir. 2006) (finding
that the "territory surrendered" by a claim amendment requiring a plate to be
"differentially spaced" did not bar equivalence to a dome-shaped structure). The facts
of Insituform and Primos arguably related to situations where the prosecution history
clearly demonstrated that the alleged equivalent and the narrowing amendment
05-1415 2
implicate entirely different aspects of the invention. Yet in reading those cases, frankly,
this court might well have justifiably reached a different result in both. For example, in
Insituform, this court seems to assume that the number of sources bears no relation to
the location of those multiple sources. A contrary conclusion might have noted that
anytime a technology adds another source it must also add another location for that
new source. Multiple sources and locations for those sources would seem logically
related.
In my view, the tangential rebuttal principle exacerbates the policy deficiencies of
the doctrine of equivalents. Upon invoking tangentiality, the patentee has already
admitted that the equivalent falls within the scope of surrendered subject matter.
Further, if the case permitted, any patentee would invoke the primary "foreseeability"
rebuttal factor. Thus, an invocation of "tangentiality" often admits that the equivalent
was both within the scope of the surrender and foreseeable at the time of prosecution.
In other words, the patent drafter could have claimed the surrendered and foreseeable
technology, but declined to do so.
Furthermore, the tangentiality rebuttal principle, by its nature, undermines
principles of public notice. This rebuttal principle operates because the patentee has
expounded very different purposes for its narrowing amendment than those applicable
to the tangential equivalent. The prosecution record thus does not address this
"tangential" equivalent (which nonetheless was surrendered and was known and
claimable during prosecution). In other words, the patentee gets a reward—coverage
under the doctrine of equivalents—precisely because its explanations did not give the
public any notice of the unclaimed and surrendered subject matter. The public might
05-1415 3
have believed it could practice technology that the patentee surrendered in prosecution.
Moreover, the public might have reasonably undertaken to practice that foreseeable
technology because the patentee could have claimed it but declined to do so. Even
beyond these principles, the public might have consulted the prosecution history and
learned that the patentee gave no explanation for its surrender of this foreseeable
technology. Thus, a diligent study of the patent and its prosecution history would give
the public every reason to believe that the "tangential" subject matter would fall outside
the scope of the invention and within the public domain. The basic principles of public
notice would suggest these unclaimed and surrendered "tangential" technologies have
no conceivable basis to expect patent protection.
This case is a classic example of the tangentiality principle running counter to
principles of public notice. Medtronic had suffered an injunction. It deliberately sought
to design around the patented technology—a response that patent law encourages.
State Indus. Inc. v. A.O. Smith Corp., 751 F.2d 1226, 1236 (Fed. Cir. 1985) ("One of the
benefits of a patent system is its so-called 'negative incentive' to 'design around' a
competitor's products, even when they are patented, thus bringing a steady flow of
innovations to the marketplace."). It undoubtedly consulted the patent and adjusted its
technology with reference to the claim language and prosecution history of the patent.
Then, after it adopted unclaimed technology that the patentee had deliberately
surrendered to the public, it finds itself again subject to an injunction. Tangentiality thus,
as in this case, can defeat principles of notice and proper procedures for designing
around patented technology. Medtronic's situation illustrates the difficulties of a broad
application of tangentiality.
05-1415 4
This "tangential" rebuttal principle becomes even more difficult in practice. What
neutral standard makes some surrendered and unclaimed technologies infringing
equivalents while others enjoy no protection? This tangential concept has no analogue
in patent law. How tangential does it have to be?
In any event, this case reaffirms that the tangential rebuttal principle remains very
narrow. See Biagro W. Sales, Inc. v. Grow More, Inc., 423 F.3d 1296, 1306 (Fed. Cir.
2005) (distinguishing Insituform as limited to situations in which the prosecution history
clearly demonstrates that "the amendment and alleged equivalent involve different
aspects of the invention"). Biagro thus explains that the factual circumstances that
could give rise to the tangential rebuttal principle will very rarely occur (even less often
successfully). Biagro emphasizes that the evidence of tangentiality must appear in the
prosecution history in order to prevent litigation-driven or hindsight reconstruction of the
reasons for an amendment. The applicant is not likely to have made a prosecution
record that makes some subject matter (the equivalent) tangential to the purpose for the
rest of the amendment. See Kenneth D. Bassinger, Unsettled Expectations in Patent
Law: Festo & The Moving Target of Claim Equivalence, 48 How. L.J. 685, 720 (2005)
("Unfortunately, if the reason for an amendment is truly tangential in nature, it is not
likely to be found in the prosecution history."); Martha M. Rumore, Ranbaxy Pharms. v.
Apotex: Redefining Claim Drafting and Patent Prosecution Under Festo, 22 No. 4 Intell.
Prop. L. Newsl. (ABA), Summer 2004, at 12, 13 (questioning whether there is, in
practice, a separate tangential relation criterion or whether the three criteria established
in Festo really boil down to simply an all encompassing foreseeability test). In any
event, I would reemphasize that the application of the tangentiality factor in this case
05-1415 5
preserves the Biagro narrowness principle and stress that tangentiality always threatens
the public notice that enables designing around.
05-1415 6