Howmedica Osteonics Corp. v. Wright Medical Technology, Inc.

United States Court of Appeals for the Federal Circuit
2007-1363

HOWMEDICA OSTEONICS CORP.,

Plaintiff-Appellant,

v.

WRIGHT MEDICAL TECHNOLOGY, INC.,

Defendant-Appellee.

William L. Mentlik, Lerner, David, Littenberg, Krumholz & Mentlik, LLP, of
Westfield, New Jersey, argued for plaintiff-appellant. With him on the brief were Roy H.
Wepner and Paul H. Kochanski. Of counsel on the brief was Joel M. Silverstein, Stern
& Kilcullen, LLC, of Roseland, New Jersey.

L. Norwood Jameson, Duane Morris LLP, of Atlanta, Georgia, argued for
defendant-appellee. With him on the brief were Matthew C. Gaudet, of Atlanta,
Georgia, Anthony J. Fitzpatrick and Christopher S. Kroon, of Boston, Massachusetts,
and Samuel W. Apicelli, of Philadelphia, Pennsylvania. Of counsel was Shawn D.
Sentilles, Wright Medical Technology, Inc., of Arlington, Tennessee.

Appealed from: United States District Court for the District of New Jersey

Judge Susan D. Wigenton
 United States Court of Appeals for the Federal Circuit

2007-1363

HOWMEDICA OSTEONICS CORP.,

Plaintiff-Appellant,

v.

WRIGHT MEDICAL TECHNOLOGY, INC.,

Defendant-Appellee.

Appeal from the United States District Court for the District of New Jersey in case no.
00-CV-1167, Judge Susan D. Wigenton.

___________________________

DECIDED: September 2, 2008
___________________________

Before DYK and PROST, Circuit Judges, and HOCHBERG, District Judge. ∗

Opinion for the court filed by Circuit Judge DYK. Circuit Judge PROST dissents.

DYK, Circuit Judge.

Plaintiff-Appellant Howmedica Osteonics Corporation (“Howmedica”) appeals

from a final judgment of noninfringement in this patent infringement action against

defendant-appellee Wright Medical Technology, Inc. (“Wright”). Under the district

court’s claim construction of the term “femoral component including at least one

∗
Honorable Faith S. Hochberg, District Judge, United States District Court
for the District of New Jersey, sitting by designation.
condylar element,” the parties stipulated that the accused product did not infringe the

asserted patent claims. Because we conclude that the construction of this claim term

was incorrect, we cannot sustain the stipulated judgment. Furthermore, because we

agree with the district court that Howmedica did not release its infringement claim as

part of an earlier settlement agreement, Wright’s asserted alternative ground for

affirmance does not support the judgment. Accordingly, we vacate the judgment of

noninfringement, and remand to the district court for further proceedings consistent with

this opinion.

BACKGROUND

I

Both parties develop, manufacture, and sell orthopedic implants for use in the

reconstruction of various joints of the human body. Howmedica is the owner of U.S.

Patent No. 5,824,100 (“the ’100 patent”), which is directed to an artificial knee

prosthesis or implant used to replace part or all of a patient’s knee joint. Claim 15, the

only independent claim asserted in this action, provides in full:

In a knee prosthesis for replacing the natural knee, the knee
prosthesis having a femoral component and a tibial component, the tibial
component including a bearing member and the femoral component
including at least one condylar element for confronting and engaging the
bearing member to accomplish articulation of the knee prosthesis
throughout a range of flexion, including a primary range of flexion between
a hyperextended position and a flexed position, the engagement between
the condylar element of the femoral component and the bearing member
of the tibial component ordinarily taking place at a contact area along
articular surface areas of the condylar element and the bearing member,
the improvement comprising:

anterior-posterior surface profile contours along the condylar
element and the bearing member, the anterior-posterior surface
profile contour along the condylar element having an essentially
constant anterior-posterior articular radius throughout the articular

2007-1363 2
 surface area of the condylar element which contacts the bearing
member during articulation throughout the primary range of
flexion, the anterior-posterior articular radius having an origin lying
generally along a line extending laterally between the medial and
lateral collateral ligament attachment points on the femur of the
natural knee.

’100 patent col.6 l.58 - col.8 l.3 (emphases added). Claim 18, which depends from

claim 15, is also at issue in this litigation. Claim 18 describes: “The improvement of

claim 15 wherein the hyperextended position is at about -15º in the range of flexion, and

the flexed position is at about 75º in the range of flexion.” Id. col.8 ll.8-10.

The knee joint is the point of connection between the lower end of the femur

(thigh bone) and the upper end of the tibia (shin bone). In a natural knee, the lower end

of the femur includes two rounded, generally smooth projections of bone called

condyles, which engage with the upper end of the tibia. As pictured below, the femoral

component (22) of the prosthesis described in claim 15 replaces a portion of the natural

femur, including one or both condyles. A prosthesis is called “unicondylar” if it replaces

only one condyle of the natural femur, and “bicondylar” if it replaces both natural

condyles. The condylar element or elements (54) of the femoral component articulate

against a “bearing member” (64), part of the “tibial component” (24) of the prosthesis,

which is surgically implanted to replace an upper portion of the tibia.

The constant-radius geometry of the condylar element described by claim 15

furthers several goals: it allows “increased areas of contact between the condylar

elements” and the tibial components “for lowered stress in the material of the bearing

member during articulation of the knee prosthesis”; it facilitates “a better balance of the

tension in the collateral ligaments of the knee”; it “enables a higher degree of conformity

between the condylar elements and the bearing member for reduced stresses during

2007-1363 3
normal activity”; it simplifies the configuration of the components, allowing easier

manufacturing; and it “enables exemplary performance and increased reliability over an

extended service life.” Id. col.1 ll.48-62.

II

The ’100 patent issued on October 20, 1998. Howmedica did not immediately

bring suit against Wright on the ’100 patent. However, Howmedica in 1997 had

commenced two lawsuits in New Jersey against Wright alleging infringement of U.S.

Patent Nos. 5,192,324 (“the Kenna patent”) and 5,133,772 (“the Hack patent”). In 1999,

Howmedica filed a third lawsuit against Wright in New Jersey, alleging infringement of

U.S. Patent No. 4,892,549 (“the Figgie patent”). At the same time, a lawsuit filed in

1991 by Wright’s predecessor against Howmedica, alleging infringement of U.S. Patent

No. 4,474,177 (“the Whiteside patent”), was pending in Massachusetts.

2007-1363 4
 In April 1999 the parties initiated settlement negotiations directed to resolving the

four pending actions. These negotiations took place between Thomas Patton (Wright’s

President and Chief Executive Officer), Ned Lipes (Howmedica’s President), Alfred

Zarnowski (Howmedica’s Senior Director of Intellectual Property), and the two parties’

outside patent counsel. The parties reached an agreement at a meeting on November

15, 1999. Wright’s counsel was responsible for drafting a written agreement reflecting

the negotiations. At this point the parties contemplated that they would execute a single

written agreement.

On November 23, 1999, Wright’s counsel explained to Howmedica’s counsel that

they had “broken the settlement into two separate agreements since Wright Medical

says this is required to comply with generally accepted accounting practices.” J.A. at

978. One agreement, the New Jersey agreement, covered the Kenna, Hack, and Figgie

patent lawsuits. The second agreement, the Massachusetts agreement, covered the

Whiteside patent lawsuit. The two draft agreements sent to Howmedica by Wright

included nearly identical mutual releases, which stated:

Howmedica Osteonics hereby releases and forever discharges Wright
Medical . . . from any and all manner of claims, controversies, demands,
damages, causes of action, or suits, that Howmedica Osteonics has, have
had, or may have against Wright Medical . . . upon or by reason of or
relating to any acts or omissions made by Wright Medical . . . on or before
the effective date of this Agreement, including, but not limited to, any and
all claims and counterclaims that were or could have been asserted by
Howmedica Osteonics in the lawsuit.

2007-1363 5
J.A. at 574 (draft Massachusetts agreement) (emphases added); see also J.A. at 586

(draft New Jersey agreement containing substantively identical language). 1

In response to the draft agreements, Howmedica objected to the release

provision of the Massachusetts agreement as being “too broad” and therefore not

accurately reflecting the parties’ agreement. J.A. at 389. Howmedica explained that,

“[a]s drafted, Howmedica Osteonics would be releasing and discharging Wright Medical

from claims involving patents owned by Howmedica Osteonics and other claims having

nothing to do with any of the matters currently in dispute between the parties.” Id.

However, Howmedica did not separately object to the identical provision in the New

Jersey agreement, although it did request other changes to that draft. In response to

Howmedica’s objection, Wright’s counsel struck the words “including, but not limited to,

any and all claims and counterclaims” from the release provision of the Massachusetts

agreement. As revised, the Massachusetts release provision covered only claims or

controversies “that were or could have been asserted” in the Whiteside patent lawsuit.

See id. at 382. The “including, but not limited to” language was not stricken from the

release provision of the New Jersey agreement, a redlined version of which was sent to

Howmedica along with the revised Massachusetts agreement. The language of the

New Jersey agreement was never conformed to the language of the Massachusetts

agreement. Both settlement agreements were executed as of December 21, 1999.

III

1
The Massachusetts and New Jersey litigations involved different third
parties as plaintiffs. The only difference in the two draft release provisions was the
inclusion of the names of those parties.

2007-1363 6
 On March 10, 2000, less than three months after the execution of the releases,

Howmedica filed this action against Wright, alleging infringement of the ’100 patent by

Wright’s ADVANCE® Total Knee System. Wright responded, asserting affirmative

defenses of noninfringement and invalidity, and also filed a counterclaim seeking a

declaration that the ’100 patent was invalid and not infringed. Wright did not initially

include an affirmative defense based on the release provision in the New Jersey

agreement. However, after the case had been pending for over two years, Wright filed

an amended answer and counterclaim, asserting as new affirmative defenses that the

’100 patent was unenforceable for misuse and inequitable conduct, and that

Howmedica’s action was barred by the New Jersey release provision.

Both parties subsequently cross-moved for summary judgment on Wright’s

release defense. In the memorandum in support of its summary judgment motion,

Howmedica argued that the New Jersey release provision, based on the intentions of

the parties, covered only the patents that were the subject matter of the four pending

lawsuits resolved by the settlement. In opposition, Wright argued that the broad

language of the New Jersey release provision barred the current action. Wright

characterized Howmedica’s position as seeking reformation of the New Jersey release,

and argued that reformation was not appropriate because there was no mutual mistake

as to the language of the provision. In reply, Howmedica urged that reformation was

unnecessary under the New Jersey law of contract interpretation. The parties also took

these positions in the simultaneous briefing on Wright’s cross-motion for summary

judgment.

2007-1363 7
 On March 18, 2005, the district court denied Wright’s motion and granted

summary judgment in favor of Howmedica on the release defense. The court treated

the New Jersey and Massachusetts agreements as though they were a single

agreement, noting that “[t]he releases encompassed within the agreements were

executed as part of the same settlement or compromise of the then-pending patent

lawsuits.” J.A. at 62. The court determined that the parties intended and understood

the releases in the agreements to cover only the four lawsuits pending at the time (as

well as one additional patent that was explicitly included in the New Jersey agreement).

The court held that, under New Jersey law, it could interpret the provisions to not cover

Howmedica’s claim under the ’100 patent. The district court concluded that reformation

of the agreement to reflect the intention of the parties was thus unnecessary.

On November 29, 2005, following briefing and a Markman hearing, the district

court issued a claim construction order construing three disputed terms of claim 15 of

the ’100 patent. First, the court construed the phrase “femoral component including at

least one condylar element” to require, in a bicondylar femoral component, both

condyles to meet the geometric limitations of the claim. Second, the court construed

“primary range of flexion” to be limited to a particular range of -15º of hyperextension to

+75º of flexion, in accordance with the specification of the ’100 patent. Finally, the court

determined that the phrase “lying generally along a line extending laterally between the

medial and lateral collateral ligament attachment points on the femur of the natural

knee” was not indefinite.

Howmedica acknowledges that it could not prove that both condylar elements of

Wright’s accused products meet the geometric limitations of claim 15 throughout the

2007-1363 8
primary range of flexion and, therefore, that it could not prove infringement under the

district court’s construction of the term “femoral component including at least one

condylar element.” Accordingly, Howmedica stipulated to a final judgment of

noninfringement. Howmedica timely appealed that judgment to this court. 2 We have

jurisdiction pursuant to 28 U.S.C. § 1295(a)(1). 3

DISCUSSION

I

We first address claim construction. Claim construction is an issue of law that we

review de novo. See Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1456 (Fed. Cir.

1998) (en banc). On appeal, Howmedica challenges the district court’s construction of

the term “femoral component including at least one condylar element.”

Claim 15 of the ’100 patent recites a knee prosthesis with a “femoral component

including at least one condylar element” and requires that the condylar element have a

certain geometry, namely, that “the anterior-posterior surface profile contour” have “an

essentially constant anterior-posterior articular radius throughout the articular surface

area of the condylar element which contacts the bearing member during articulation

throughout the primary range of flexion.” ’100 patent col.6 ll.61-62, col.7 ll.5-11. It is

2
Initially, Wright filed a cross-appeal challenging the district court’s decision
on the cross-motions for summary judgment. By order dated April 16, 2008, we
dismissed Wright’s cross-appeal as improper because it did not seek to enlarge the
judgment but merely asserted an alternative ground to affirm the judgment. The briefs
relating to the cross-appeal were stricken and the parties filed new, compliant briefs.
3
Unlike Jang v. Boston Scientific Corp., 532 F.3d 1330 (Fed. Cir. 2008),
where we vacated and remanded a stipulated judgment, here the parties have identified
a single claim term as dispositive of the infringement issue, and we are able to
determine why the district court’s construction of that term renders the accused product
noninfringing.

2007-1363 9
undisputed that claim 15 can cover a unicondylar prosthesis, where only one artificial

condyle is employed and one natural condyle remains. However, based on the use of

the plural “condyles” throughout the patent specification, “the importance of having the

same radii on both condylar elements” to achieving the benefits of the patent, and the

testimony of the inventor, the district court concluded that in a bicondylar prosthesis,

where both condyles are replaced, “both condyles must meet [the geometric]

requirements.” J.A. at 37. Although this is a close case, we disagree.

“It is a ‘bedrock principle’ of patent law that ‘the claims of a patent define the

invention to which the patentee is entitled the right to exclude.’” Phillips v. AWH Corp.,

415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (quoting Innova/Pure Water, Inc. v.

Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). The plain

language of claim 15 requires only one condylar element. The femoral component must

include “at least one condylar element,” which the district court correctly understood to

mean “one or more.” The claim then requires that “the condylar element” meet the

specified geometric limitations. See ’100 patent col.7 ll.4-5, 6-7, 9. If the patentee had

intended both condyles in a bicondylar prosthesis to meet these limitations, he could

have drafted claim 15 to require that “both condylar elements” do so. The more natural

way of drafting the claim language to achieve that result would be to require “each

condylar element,” rather than “the condylar element,” to conform to the constant-radius

geometry.

Wright makes several arguments in an attempt to show that, despite the plain

language of the claim, such a prosthesis is not covered. First, it argues that because

the purpose of the claim is “to accomplish articulation of the knee prosthesis throughout

2007-1363 10
a range of flexion,” and because both condyles are involved in articulation, both

condyles should be required to meet the geometric limitations. Here we are dealing

with a Jepson claim. The “articulation” requirement of the preamble is a claim limitation.

See Epcon Gas Sys., Inc. v. Bauer Compressors, Inc., 279 F.3d 1022, 1029 (Fed. Cir.

2002). However, it is a separate limitation from the geometric requirements appearing

in the body of the claim. Wright does not assert that the articulation requirement is not

satisfied. In other words, Wright does not argue that a bicondylar prosthesis in which

only one condyle has the required constant-radius geometry does not achieve

articulation throughout the primary range of flexion, which the district court construed as

“-15º of hyperextension to +75º of flexion.” J.A. at 40. A prosthesis can satisfy the

articulation requirement without satisfying the geometric requirements. Thus, the mere

fact that both condyles are involved in articulation of the prosthesis does not require a

construction of claim 15 in which both condyles must conform to the specified geometry.

Wright next argues that a bicondylar prosthesis in which only one condyle meets

the geometric limitations of claim 15 will not achieve several of the purposes of the

invention as a whole, recited in the specification of the ’100 patent. As we have

explained, such an argument is not persuasive:

The court’s task is not to limit claim language to exclude particular devices
because they do not serve a perceived “purpose” of the invention. . . . An
invention may possess a number of advantages or purposes, and there is
no requirement that every claim directed to that invention be limited to
encompass all of them.

E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1370 (Fed. Cir. 2003) (footnote

omitted); see also Kim v. ConAgra Foods, Inc., 465 F.3d 1312, 1319 (Fed. Cir. 2006)

(refusing to limit claim based on “one object of the invention”); Brookhill-Wilk 1, LLC v.

2007-1363 11
Intuitive Surgical, Inc., 334 F.3d 1294, 1301 (Fed. Cir. 2003). As discussed above, the

invention described by claim 15 serves multiple purposes, including a simplified

configuration for ease of manufacturing, increased reliability of the prosthesis, reduced

stress on the knee, and an increased area of contact between the condylar element and

the bearing member of the tibial component. Wright does not attempt to show that a

prosthesis in which only one condylar element has the recited geometric characteristics

would not achieve any of these objectives. Indeed, Wright’s own advertising for its

accused product cites at least one of the same objectives, namely “provid[ing] greater

tibio-femoral conformity with maximum contact area.” J.A. at 2437. 4

Wright also argues, however, that the specification of the ’100 patent does

require both condylar elements of a bicondylar prosthesis to conform to the geometric

limitations of claim 15. Wright correctly points out that every disclosure of a bicondylar

knee in the specification shows two condyles each meeting the geometric requirements

of claim 15. However, we have repeatedly held that the fact that the specification

describes only a single embodiment, standing alone, is insufficient to limit otherwise

broad claim language. See Phillips, 415 F.3d at 1323; Liebel-Flarsheim Co. v. Medrad,

Inc., 358 F.3d 898, 906 (Fed. Cir. 2004); Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d

1313, 1327-28 (Fed. Cir. 2003). This is not a case in which the specification makes

clear that the invention requires two condyles meeting the specified geometry.

Compare Ormco Corp. v. Align Tech., Inc., 498 F.3d 1307, 1313-14 (Fed. Cir. 2007)

4
Wright’s expert witnesses, Dr. Kester (the ‘100 patent inventor) and Dr.
Bradley, testified that a bicondylar prosthesis in which only one condyle met the
geometric limitations of claim 15 would not satisfy the objectives of the ‘100 patent.
This testimony is entitled to little weight.

2007-1363 12
(limiting claims in part based on specification’s identification of the “primary objective” of

the invention and its distinction of the invention from the prior art based on that

objective); SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337,

1342-44 (Fed. Cir. 2001) (limiting claims based on language in specification repeatedly

stating that “the invention” required such limitation and that the limitation was applicable

to “all embodiments of the present invention”). Again, Wright acknowledges that

although a natural condyle may not meet the geometric limitations of claim 15, a

unicondylar prosthesis used with such a natural condyle is nonetheless within the scope

of the claim. Nothing in the specification supports a reading of claim 15 to include a

unicondylar prosthesis but to exclude a bicondylar prosthesis in which only one condylar

element has the required geometric characteristics.

Wright next argues that the prosecution history of the ’100 patent requires its

proposed construction. In making this argument, Wright relies on a letter sent by the

attorney prosecuting the ’100 patent to his client after an examiner interview. In this

letter, the attorney explained the examiner’s position that “the claims could be worded

more clearly to bring out the fact that the constant radius in the present device does

extend along enough of each condylar element to cover the range of articulation

specified.” J.A. at 1870 (emphasis added). Wright argues that the attorney’s use of the

word “each” demonstrates that both the attorney and the examiner understood that both

condylar elements in a bicondylar prosthesis must have the required geometry.

Whatever meaning it might have, this letter is not part of the prosecution history, which

consists of “all express representations made by or on behalf of the applicant to the

examiner to induce a patent grant.” Standard Oil Co. v. Am. Cyanamid Co., 774 F.2d

2007-1363 13
448, 452 (Fed. Cir. 1985). A letter between a prosecuting attorney and a patent

applicant is not a representation to the patent examiner, and is therefore not part of the

prosecution history. Rather, it is extrinsic evidence, which can be of limited value to

claim construction, “considered in the context of the intrinsic evidence,” if it “can help

educate the court regarding the field of the invention and can help the court determine

what a person of ordinary skill in the art would understand claim terms to mean.”

Phillips, 415 F.3d at 1319. The letter Wright relies on, reporting to the inventor on the

results of an examiner interview, achieves neither of these objectives and is of no value

to the construction of the disputed claim language.

Finally, Wright argues that the testimony of Dr. Mark Kester, the lead inventor of

the ’100 patent, compels a construction of claim 15 that requires both condylar elements

in a bicondylar prosthesis to meet the geometric limitations. Dr. Kester testified that the

language “at least one condylar element” was added to the claims so that they would

clearly cover unicondylar prostheses. He further testified that it was his “intention that

both condylar elements [in a bicondylar prosthesis] would meet the requirement[] of

having the constant anterior-posterior radius throughout the primary range of flexion.”

J.A. at 1668. The testimony of an inventor “cannot be relied on to change the meaning

of the claims.” Markman v. Westview Instruments, Inc., 52 F.3d 967, 983 (Fed. Cir.

1995) (en banc), aff’d, 517 U.S. 370 (1996); see also Hoechst Celanese Corp. v. BP

Chems. Ltd., 78 F.3d 1575, 1580 (Fed. Cir. 1996) (“Markman requires us to give no

deference to the testimony of the inventor about the meaning of the claims.”). In

particular, we have explained that “[t]he subjective intent of the inventor when he used a

2007-1363 14
particular term is of little or no probative weight in determining the scope of a claim.”

Markman, 52 F.3d at 985.

Wright argues that inventor testimony is relevant in cases where the inventor

does not seek to enlarge the scope of the claims to cover an accused product, but

rather admits that the claims are limited to exclude that product. Under such

circumstances, according to Wright, the testimony is reliable because it is against the

inventor’s interest. We reject this distinction. Whether an inventor’s testimony is

consistent with a broader or narrower claim scope, that testimony is still limited by the

fact that an inventor understands the invention but may not understand the claims,

which are typically drafted by the attorney prosecuting the patent application. As we

have explained, “it is not unusual for there to be a significant difference between what

an inventor thinks his patented invention is and what the ultimate scope of the claims is

after allowance by the PTO.” Id. Moreover, Wright’s asserted approach, to rely on

inventor testimony when it is contrary to interest, is unworkable. It would require a case

by case determination as to whether an inventor is testifying against his or her interest.

The inventor might testify to a broad claim scope in order to increase the likelihood of a

finding of infringement. The inventor also might testify to a narrower claim scope to

avoid a challenge to the validity of the patent. We hold that inventor testimony as to the

inventor’s subjective intent is irrelevant to the issue of claim construction. 5

As explained above, the plain language of claim 15 makes clear that, whether a

prosthesis is unicondylar or bicondylar, only one condylar element meeting the

5
The testimony of an inventor, of course, may be pertinent as a form of
expert testimony, for example, as to understanding the established meaning of

2007-1363 15
geometric limitations of the claim is required to bring that prosthesis within the scope of

the claim. Wright offers no persuasive evidence that the claim should be interpreted

other than by its plain language. Because we conclude that the claim requires only that

one condylar element in a bicondylar prosthesis satisfy the claim limitations, we vacate

the judgment and remand.

II

As a separate and independent ground, Wright asserts that the judgment may

nonetheless be affirmed on the basis that Howmedica’s infringement suit is barred by

the release provision in the New Jersey agreement. Wright argues that the district court

incorrectly granted summary judgment in favor of Howmedica on the release defense

because New Jersey law does not support a construction of the contract language here

to exclude the present action from the release. We review the district court’s summary

judgment with regard to the release provision de novo. See Symantec Corp. v.

Computer Assocs. Int’l, Inc., 522 F.3d 1279, 1287 (Fed. Cir. 2008). Construction of a

contract is an issue of law that we review without deference. See Intel Corp. v. VIA

Techs., Inc., 319 F.3d 1357, 1361 (Fed. Cir. 2003). We apply state contract law in

interpreting a settlement agreement. See Augustine Med., Inc. v. Progressive

Dynamics, Inc., 194 F.3d 1367, 1370 (Fed. Cir. 1999).

The district court concluded, “[a]fter reviewing all the facts and circumstances

surrounding the creation of the Companion Settlement Agreements, as well as the

actual language used, . . . the instant action is not barred by the release provision.” J.A.

particular terms in the relevant art. Phillips v. AWH Corp., 415 F.3d 1303, 1318 (Fed.
Cir. 2005) (en banc). That is not the situation here.

2007-1363 16
at 63. We agree with the result reached by the district court, although we rest our

decision on slightly different grounds.

The district court found that “it was the intent of the parties that the settlement

release only cover the four lawsuits that were the subject of the Companion Settlement

Agreements.” Id. However, on its face, the release provision of the New Jersey

agreement applies to “any and all manner of claims . . . that Howmedica . . . has, ha[s]

had, or may have against Wright Medical . . . including, but not limited to, any and all

claims and counterclaims that were or could have been asserted” in the New Jersey

lawsuits. Id. at 302, ¶ 27. While releases generally are construed not to release future

claims, see Smith v. Smith, 371 A.2d 1, 6 (N.J. 1977); Bilotti v. Accurate Forming Corp.,

188 A.2d 24, 35-36 (N.J. 1963), this language would appear to release the claims in

question since they existed at the time of the settlement agreement. See Augustine,

194 F.3d at 1372 (construing similar language broadly to “release[] all possible future

claims”); Three Rivers Motors Co. v. Ford Motor Co., 522 F.2d 885, 895 (3d Cir. 1975)

(finding that similar language left “nothing open and unsettled between the parties”).

New Jersey law does allow a court interpreting a contract provision to consider

extrinsic evidence. See Halper v. Halper, 164 F.3d 830, 840-41 (3d Cir. 1999); Atl. N.

Airlines v. Schwimmer, 96 A.2d 652, 656 (N.J. 1953). “Such evidence is adducible only

for the purpose of interpreting the writing—not for the purpose of modifying or enlarging

or curtailing its terms.” Atl. N. Airlines, 96 A.2d at 656. We agree with the district court

that the intent of the parties was to have the same release language in both the New

Jersey and the Massachusetts contracts. We need not reach the question of whether,

under New Jersey law, this result can be achieved through “interpretation” of the

2007-1363 17
contract because we conclude that reformation of the contract is appropriate to conform

the language of the New Jersey agreement to match the language of the

Massachusetts agreement and thus reflect the actual intention of the parties. 6

The undisputed facts show that reformation would be available even if we were

to reject the contract interpretation analysis by the district court as being in reality a

modification of the contract. When a written contract “fails to express the agreement

because of a mistake of both parties as to the contents or effect of the writing, the court

may at the request of a party reform the writing to express the agreement.”

Restatement (Second) of Contracts § 155 (1981). The purpose of reformation,

therefore, is to correct a mistake that occurred in reducing the parties’ actual, negotiated

agreement to writing. “The mere fact that a mistaken party could have avoided the

mistake by the exercise of reasonable care does not preclude . . . reformation,” unless

that party’s “fault amounts to a failure to act in good faith and in accordance with

6
We do not agree with Wright that the statements by Howmedica to the
district court prevent us from determining whether reformation of the New Jersey
agreement is appropriate. Although a statement by Howmedica in its summary
judgment reply brief could be read as disclaiming reformation, Howmedica’s quotation
of Brodzinsky v. Pulek, 182 A.2d 149 (N.J. Super. Ct. App. Div. 1962), a reformation
case, in its opening brief, as well as its response to Wright’s summary judgment motion,
clearly raised the issue of reformation and noted that it was available in cases of mutual
mistake. Howmedica’s reply brief simply made clear that, in its view, the court need not
go so far. We have previously held that a party’s inclusion of an argument in a
“secondary role” in its trial court briefing is sufficient to defeat a charge that the party
has waived that argument. See Navajo Nation v. United States, 501 F.3d 1327, 1337
(Fed. Cir. 2007). This is because the principle of issue preservation “does not demand
the incantation of particular words,” but rather “requires that the lower court be fairly put
on notice as to the substance of the issue.” Nelson v. Adams USA, Inc., 529 U.S. 460,
469 (2000). Here, the district court and Wright were clearly put on notice of the
substance of the dispute over the release provision, and were apprised of the possibility
of reformation. Indeed, Wright’s response treated the reformation issue extensively and
exclusively. Accordingly, we reject Wright’s argument that reformation of the New
Jersey agreement is unavailable.

2007-1363 18
reasonable standards of fair dealing.” Id. § 157 & cmt. a. Reformation of a contract

requires clear and convincing evidence of “a mistake common to both parties” that

causes the written instrument not to reflect the real agreement between the parties.

Brodzinsky, 182 A.2d at 153. Moreover, “the mistake must be a material one; it must be

one in the absence of which the party who made it would not have entered into the

compromise.” 28 Richard A. Lord, Williston on Contracts § 70:219 (4th ed. 1990).

The two agreements, drafted by Wright’s counsel, originally had identical

language. The testimony of both parties’ representatives made clear that the parties

understood that the two agreements would have the same effect. Indeed, Wright’s

President and Chief Executive Officer, Patton, testified that at the time of the settlement

he did not realize that there was a difference between the language of the New Jersey

and Massachusetts release provisions. Likewise, Zarnowski, Howmedica’s Senior

Director of Intellectual Property, testified that when he reviewed the final drafts of the

two agreements, he “did not discover the differences between the two release clauses.”

J.A. at 620. In the district court proceedings, Wright conceded that, presumably, “if

[Howmedica had] asked for the change in the [New Jersey] agreement” that had been

made in the Massachusetts agreement, “the change would have been made.” J.A. at

767-68. Wright has identified no contrary evidence showing that the parties intended

the two provisions to have different language or to be of different scope, or that there

was any plausible reason as to why the parties would wish the New Jersey release

provision to have a broader scope than the Massachusetts release provision. The

testimony of Patton and Zarnowski demonstrates that the parties were mutually

mistaken in believing there to be no difference between the two release provisions in

2007-1363 19
the final drafts of the agreements. It is significant in this connection that the parties in

the integration clause of the agreements indicated that each agreement would be

construed to be consistent with the other—i.e., that the agreements were not designed

to conflict, as would be the case if the two agreements had different release provisions.

It is also significant that Wright did not even assert its release defense until

Howmedica’s action had been pending for over two years, suggesting a belated

discovery of a drafting error. See Journeyman Barbers v. Pollino, 126 A.2d 194, 197

(N.J. 1956) (noting that “practical interpretation” evidenced by parties’ post-performance

conduct was “entitled to great weight”); Wheatly v. Sook Suh, 525 A.2d 340, 345 (N.J.

App. Div. 1987) (relying on “the conduct of defendants after the execution of the

agreement”). This mutual mistake was material. Accordingly, based on the parties’

mutual and material mistake, the release provision of the New Jersey agreement should

be reformed to have the same language as the Massachusetts release provision.

The question remains, however, what the meaning of that language is. Wright

contends that even under the narrower language of the Massachusetts agreement, the

current suit is barred. As reformed, the release provision applies to claims “that were or

could have been asserted by Howmedica” in the earlier litigation. J.A. at 382. The

meaning of this language, by itself, is ambiguous, and could be read to cover any

infringement claim where the patent had issued and the accused product existed before

the date of the agreement, or any infringement claim for which the patentee had

completed a reasonable pre-suit investigation to allow a good faith filing of the claim, or

only a claim that had matured to the point where both parties recognized the existence

of a controversy that would be a predicate to filing an infringement suit.

2007-1363 20
 Here the district court properly relied on the intent of the parties to interpret the

ambiguous language. When a contract provision is ambiguous, New Jersey law permits

reference to extrinsic evidence to determine the intent of the parties. See Halper, 164

F.3d at 841; Krosnowski v. Krosnowski, 126 A.2d 182, 187-88 (N.J. 1956); Atl. N.

Airlines, 96 A.2d at 656. “When it becomes clear that a ‘certain factual result’ was

within the contemplation of the parties, ‘interpretation should be affected by reasonable

and necessary implications, so that the legal effect then given to the instrument will be

such as to attain the intended factual result.’” Krosnowski, 126 A.2d at 188 (citation

omitted).

The evidence makes clear that the parties did not intend the release provision to

cover the current infringement action. As the district court noted, the primary purpose of

the agreements was to resolve the pending litigation. Cross-licenses of the four

asserted patents were made a part of the agreement. Although a license for use of

another patent, the Averill patent, was included, Howmedica did not grant Wright any

license under the ’100 patent. Given the structure of the agreements it is on its face

unlikely that the parties would exclude the ’100 patent from the cross-licensing

provisions but effectively grant rights in the patent to Wright with regard to existing

products by virtue of the release provision.

The testimony of both parties confirms this reading of the agreements. Lipes (the

President of Howmedica) and Zarnowski (Howmedica’s Senior Director of Intellectual

Property) both testified that Howmedica refused to agree during the settlement

negotiations to grant Wright any rights with respect to the ’100 patent or the ADVANCE®

knee product. Zarnowski explained that both he and Lipes “had an understanding that

2007-1363 21
there was not a dispute” with regard to the ’100 patent, and that therefore “it was not

part of the release.” J.A. at 621. Patton (Wright’s President and Chief Executive

Officer) admitted that he did not believe the release provision applied to patents owned

by the parties that were unrelated to the matters then in dispute, or to claims unrelated

to those matters. Although Wright argues, and Patton’s testimony confirms, that Wright

was seeking what it called a “global settlement,” Patton acknowledged that his

understanding of the release provision was that it covered only current disputes

between the parties. Although he knew of and had discussed with Lipes rumors that

Howmedica might have a claim against the ADVANCE® knee product, Patton stated that

his view was that this kind of “unsubstantiated allegation” did not constitute an actual

controversy covered by the release provision. J.A. at 918.

Thus, we conclude that both parties intended that the reformed release language

be limited to matters actually in dispute at the time. Accordingly, the district court

correctly granted summary judgment in favor of Howmedica on Wright’s affirmative

defense based on the release. We therefore reject Wright’s assertion that the defense

is an alternative ground on which to affirm the district court’s judgment.

CONCLUSION

For the reasons discussed above, we vacate the judgment of noninfringement,

and remand to the district court for further proceedings consistent with this opinion.

VACATED AND REMANDED

COSTS

No costs.

2007-1363 22
 United States Court of Appeals for the Federal Circuit
2007-1363,

HOWMEDICA OSTEONICS CORP.,

Plaintiff-Appellant,

v.

WRIGHT MEDICAL TECHNOLOGY, INC.,

Defendant-Appellee.

Appeals from the United States District Court for the District of New Jersey in case no.
00-CV-1167, Judge Susan D. Wigenton.

PROST, Circuit Judge, dissenting.

I would affirm the district court’s construction of the claim phrase “femoral

component including at least one condylar element” to require that, in a bi-condylar

prosthesis, both condylar elements must satisfy the geometric limitations of the claim.

Accordingly, I respectfully dissent.

I

When construing a claim, we evaluate the meaning of a term or phrase in the

context of the claim. Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en

banc). As noted by the majority, claim 15 recites:

In a knee prosthesis for replacing the natural knee, the knee
prosthesis having a femoral component and a tibial component, the tibial
component including a bearing member and the femoral component
including at least one condylar element for confronting and engaging the
bearing member to accomplish articulation of the knee prosthesis
throughout a range of flexion, including a primary range of flexion between
a hyperextended position and a flexed position, the engagement between
the condylar element of the femoral component and the bearing member
of the tibial component ordinarily taking place at a contact area along
 articular surface areas of the condylar element and the bearing member,
the improvement comprising:
anterior-posterior surface profile contours along the condylar element
and the bearing member, the anterior-posterior surface profile
contour along the condylar element having an essentially constant
anterior-posterior articular radius throughout the articular surface
area of the condylar element which contacts the bearing member
during articulation throughout the primary range of flexion, the
anterior-posterior articular radius having an origin lying generally
along a line extending laterally between the medial and lateral
collateral ligament attachment points on the femur of the natural
knee.

’100 patent, col.6 l.58–col.8 l.3 (emphases added). This claim can be easily divided into

two parts—the first paragraph contains the preamble of the claim and specifies the

components of the claimed knee prosthesis, while the second paragraph details the

“improvement” of the invention by identifying geometric characteristics of the claimed

prosthesis.

In the first paragraph, the claim recites a knee prosthesis having a “tibial

component” (for replacing part of the tibia, i.e., shin bone) and a “femoral component”

(for replacing part of the femur, i.e., thigh bone). Id. at col.6 ll.58-60; see id. at col.2

ll.49-56. The tibial component, then, includes a “bearing member,” and the femoral

component includes “at least one condylar element” that engages the bearing member

to accomplish articulation (i.e., bending at the joint) of the knee prosthesis. Id. at col.6

l.60–col.7 l.3. In the second paragraph, the claim describes the “improvement,” which

consists of particular geometric limitations. Id. at col.7 l.4–col.8 l.3. While the specifics

of these geometric limitations are not relevant on appeal, it is significant that the second

paragraph describes these geometric limitations as characteristics of “the condylar

element” and “the bearing member”—components that were identified by the claim’s

first paragraph.

2007-1363 2
 With respect to the meaning of the particular phrase at issue, the claim specifies

that the femoral component includes “at least one condylar element for confronting and

engaging the bearing member to accomplish articulation of the knee prosthesis

throughout a range of flexion.” Id. at col.6 ll.61-64. In other words, the claim requires

“at least one condylar element” for engaging the bearing member to accomplish the

bending of the knee prosthesis at the joint between “the condylar element” and the

bearing member. 1

With this language, the claim defines the term “at least one condylar element”—it

is the part or parts of the femoral component of the knee prosthesis that “confront[] and

engag[e] the bearing member to accomplish articulation of the knee prosthesis.” As the

majority explained, a bi-condylar prosthesis replaces both of a natural knee’s condyles

with two condylar elements, where, in a uni-condylar prosthesis, only one of the two

condyles is replaced by a condylar element (the other natural condyle remains in the

knee). The parties agreed that, in a bi-condylar prosthesis, both condylar elements are

necessary to engage the bearing member “to accomplish articulation.” On the other

hand, in a uni-condylar prosthesis, the one condylar element works with the remaining

natural condyle “to accomplish articulation.” Because both condylar elements in a bi-

condylar prosthesis are required to accomplish articulation, the term “at least one

condylar element” must refer to both of the condylar elements of a bi-condylar

prosthesis.

1
The parties’ stipulated constructions clarify that “confronting” means
facing, “engaging” means contacting, “articulation” is the movement of the knee as it
flexes or bends, and the “range of flexion” means the range of bending of the knee joint.

2007-1363 3
 The claim, after identifying and defining the claim term “at least one condylar

element” in this manner, later refers to “the condylar element.” The parties agree that

“the condylar element” is shorthand for “the [at least one] condylar element,” and, thus,

we know that the terms “at least one condylar element” and “the condylar element” are

coextensive in scope.

Thus, because the claim defines “the [at least one] condylar element” to be all

condylar elements that engage and confront the bearing member to accomplish

articulation of the knee prosthesis, I would affirm the district court’s construction of

“femoral component including at least one condylar element” to require that, in a bi-

condylar prosthesis, both condylar elements must satisfy the geometric requirements

specified in the second paragraph of the claim.

Moreover, the specification supports the district court’s claim construction. The

specification always describes knee prostheses with two condylar elements, only

includes embodiments where both condylar elements have the same geometric

requirements, consistently describes characteristics of the “condylar elements 54” and

“each condylar element 54,” and never suggests or indicates that one of the two

condylar elements may have different characteristics. While the claim language is

admittedly broader than this disclosure—i.e., the parties agree that the claim

encompasses a uni-condylar prosthesis which is never disclosed—the specification

never indicates that it should be so broad as to encompass a bi-condylar prosthesis

having only one of the condylar elements with the claimed geometric requirements,

where the other condylar element has an unspecified geometry.

2007-1363 4
 II

Under the majority’s claim construction, however, the claim requires that only one

condylar element of a bi-condylar prosthesis satisfy the claim’s geometric requirements.

In support, the majority states that “[t]he plain language of claim 15 requires only one

condylar element” and, if the patentee had intended to refer to both condylar elements,

he could have drafted the claim more clearly. Majority Op. at 10. I disagree with this

analysis for several reasons.

First, while the majority notes that “at least one condylar element” is correctly

understood to mean “one or more,” the opinion fails to explain how this comports with its

conclusion that “[t]he plain language of claim 15 requires only one condylar element.”

Id.

Second, the majority overlooks the context of the claim, which specifies that the

claimed prosthesis include “at least one condylar element for confronting and engaging

the bearing member to accomplish articulation of the knee prosthesis throughout a

range of flexion.” ’100 patent, col.6 ll.61-64 (emphases added). While the majority

acknowledges that “to accomplish articulation” is a claim limitation, it characterizes this

limitation as a mere “purpose” of the claim rather than a definition of the claimed “at

least one condylar element.” Majority Op. at 10-11. Then, noting that this purpose is “a

separate limitation from the geometric requirements appearing in the body of the claim,”

the majority concludes that “the mere fact that both condyles are involved in articulation

of the prosthesis does not require a construction of claim 15 in which both condyles

must conform to the specified geometry.” Id. at 11. While the majority is correct that

these limitations are separate and distinct, the majority’s conclusion does not follow

2007-1363 5
from its premise. The separateness of these limitations has no relevance—the claim

requires “the [at least one] condylar element” to satisfy both limitations.

Third, the majority’s first—and apparently primary—reason for its construction is:

“If the patentee had intended both condyles in a bicondylar prosthesis to meet these

[geometric] limitations, he could have drafted claim 15” more naturally “to require ‘each

condylar element,’ rather than ‘the condylar element.’” Id. at 10. But the fact that a

claim could have been drafted more clearly is not, by itself, a sufficient basis to adopt a

particular interpretation of claim language. A claim can often be drafted more clearly—

litigation only arises because it was not. Moreover, applying the majority’s analysis, the

claim’s use of the phrase “at least one condylar element” rather than simply “a condylar

element” supports the district court’s conclusion. It demonstrates that the patentee did

not intend to specify the geometric requirements of only one condylar element of a bi-

condylar prosthesis, but rather, intended to place requirements on the knee prosthesis’s

condylar element or elements.

III

In sum, the district court correctly construed the claim term at issue. As I would

affirm the district court’s judgment of non-infringement, I respectfully dissent.

2007-1363 6