United States Court of Appeals for the Federal Circuit
04-1302
HOWMEDICA OSTEONICS CORP.,
Plaintiff-Appellee,
v.
TRANQUIL PROSPECTS, LTD.,
Defendant-Appellant.
William L. Mentlik, Lerner, David, Littenberg, Krumholz & Mentlik, LLP, of
Westfield, New Jersey, argued for plaintiff-appellee. With him on the brief were Paul H.
Kochanski and Roy H. Wepner.
George C. Summerfield, Stadheim & Grear, Ltd., of Chicago, Illinois, argued for
defendant-appellant. With him on the brief were Joseph A. Grear, Rolf O. Stadheim and
Keith A. Vogt.
Appealed from: United States District Court for the Northern District of Indiana
Judge Allen Sharp
United States Court of Appeals for the Federal Circuit
04-1302
HOWMEDICA OSTEONICS CORP.,
Plaintiff-Appellee,
v.
TRANQUIL PROSPECTS, LTD.,
Defendant-Appellant.
___________________________
DECIDED: March 28, 2005
___________________________
Before RADER, DYK, and PROST, Circuit Judges.
RADER, Circuit Judge.
Tranquil Prospects, Ltd. (Tranquil) is the owner by assignment of United States
Patent Nos. 5,222,985 (June 29, 1993) and 4,636,214 (Jan. 13, 1987) (the ’985 and
’214 patents respectively) concerning the implantation of intramedullary prostheses.
Howmedica Osteonics Corp. (Howmedica) sought a declaratory judgment in the
Northern District of Indiana that the claims of the ’985 and ’214 patents are invalid,
unenforceable, and not infringed. Tranquil counterclaimed for patent infringement. On
September 25, 2003, the district court construed the disputed terms in the claims.
Howmedica Osteonics Corp. v. Tranquil Prospects, Ltd., No. 3:02-CV-0321-AS (N.D.
Ind. Sept. 25, 2003) (Construction Order). Because it was unable to construe the term
“transverse sectional dimensions,” the district court found that the claims were
indefinite. Id., slip op. at 10. The district court also construed the claims of the ’985
patent to require a coating on the prosthetic before implantation in the bone. Id., slip op.
at 5-6. Because the district court erred in holding the phrase “transverse sectional
dimensions” indefinite and in construing the claims of the ’985 patent to require
precoating the prosthetic prior to insertion into the bone, this court reverses in part,
vacates in part and remands.
I
The ’985 and ’214 patents have identical written descriptions.1 The ’214 patent
claims methods for surgical orthopedic implantation of an intramedullary prosthesis; the
’985 patent claims an intramedullary prosthesis apparatus. Intramedullary prostheses
replace the ball of the hip joint. ’214 patent, col. 1, ll. 15-25. “[T]he patient’s ball and a
part of the neck from the upper end of the femoral bone” are removed. Id. A portion of
the “centrally-positioned, softer, cancellous bone of the medullary canal [is] rasped to
form a bone cavity [or stem socket] which [is] able to accept therein the stem of the
prosthesis.” Id. “A metal prosthesis implant, having a ball, neck, and stem, [is] then
inserted into the medullary canal of the femur.” Id.
Prior art intramedullary prostheses were substantially smaller than the stem
sockets to avoid fracturing the femoral bone during installation. Id. at ll. 26-31 & 52-56.
These prior art prostheses, however, lacked the required stability and load transfer to
allow patients a full range of motion without pain. Id. at ll. 33-37 & 52-63.
In an attempt to stabilize the prostheses, the prior art filled the stem socket with
bone cement to help stabilize the prosthesis within the stem socket. This process did
1
To avoid redundancy, this opinion will provide citations to the written
description of only the ’214 patent when discussing issues pertinent to both the ’214 and
’985 patents.
04-1302 2
not work well because an uneven distribution of the bone cement within the stem socket
often caused the same problems. Id. at col. 1, ll. 64-68 & col. 2, ll. 35-42. These bone
cement prostheses also tended to wear out and break more quickly due to the poor fit of
the undersized prostheses and uneven distribution of the stabilizing cement. Id. at col.
2, ll. 38-52. Finally, the bone cement also introduced new problems, namely “migration
of unreacted monomer from the bone cement to tissue, and the need for the bone
cement to undergo an exothermic polymerization . . . .” Id. at col. 2, ll. 58-63.
To avoid the problems of bone cement, the prior art coated the stem of
prostheses with a composite porous outer coating. Id. at col. 2, ll. 64-68. Although
coated stems ameliorated some of the bone cement problems, patients continued to
experience problems because the stems were undersized relative to the medullary
canal. Id. at col. 3, ll. 13-20. “[T]he void space in the stem socket was surrounded
substantially by relatively soft cancellous bone which could not sustain the mechanical
stress loads imposed thereon.” Id. at col. 3, ll. 15-18.
The ’985 and ’214 patents overcame these problems in the prior art by
introducing methods and apparatus for installation of a intramedullary prosthetic that is
substantially the same size and shape as the medullary canal, as defined by the softer
cortical bone or cortex. Id. at ll. 50-58. Substantially conforming the stem of the
prosthesis to the shape of the medullary canal and rasping a complementary stem
socket results in improved stem stabilization, improved load transfer from the stem to
the surrounding dense cortical bone, and reduced localized stress zones. Id. at ll. 39-
48.
04-1302 3
Claim 1 of the ’214 patent is representative of the claim language at issue in that
patent, and states:
1. A method of surgical orthopedic implantation of an intramedullary
prosthesis device having an elongate stem with distal and proximate ends
into the medullary canal of a long bone defined by the cortex of a long
bone and comprising the steps of:
forming in said medullary canal a stem socket;
sizing the stem socket with an appropriately sized tool to form a socket
defined substantially by the inner periphery of compact bone formed by
cortical or dense cancellous bone, said stem having transverse sectional
dimensions along substantially its entire length which are undersized with
respect to adjacent corresponding transverse sectional dimensions of said
stem socket;
then injecting bone cement in the completed stem socket; and
finally pushing said stem into said stem socket with said bone cement
therein surrounding the stem for its entire length including its distal and
proximate ends whereby said cement forms a liner around the outer
surface of said stem between the stem and the adjacent compact bone,
the transverse sectional dimensions of the liner and stem constituting at
least around seventy percent (70%) of the corresponding transverse
sectional dimensions of the long bone defined by cortical bone or
metaphyseal and epiphyseal segments of said long bone, and at least
around ninety percent (90%) of the corresponding transverse sectional
dimensions of the long bone defined by cortical bone of the diaphyseal
segment of said long bone.
Claim 1 of the ’985 patent is representative of the claim language at issue in that
patent, and states:
1. An intramedullary prosthesis comprising:
an elongate stem having distal and proximal ends and adapted to be
forcibly inserted within an elongated stem socket having its inner periphery
defined by compact bone formed by cortical bone or dense cancellous
bone of a long bone, said stem having transverse sectional dimensions
along substantially its entire length undersized with respect to
corresponding transverse sectional dimensions of said socket;
a layer of coating material surrounding said undersized stem along its
04-1302 4
entire length including its distal and proximal ends and covering
substantially the entire outer surface of said stem, the coated stem having
transverse sectional dimensions constituting at least around seventy
percent (70%) of the transverse sectional dimensions of said medullary
canal defined by cortical bone of the metaphyseal and epiphyseal
segments of said long bone, and at least around ninety percent (90%) of
the corresponding transverse sectional dimensions of the long bone
defined by the cortical bone of the diaphyseal segment of said long bone;
said layer of coating material being of a generally uniform predetermined
thickness along the entire length of the stem sufficient to provide improved
load transfer between the stem and the adjacent compact bone formed by
hard cancellous bone and hard cortical bone, said tapered stem being of
minimal cross-sectional area adjacent said distal end and of maximum
cross-sectional area adjacent said proximal end with said generally
uniform thickness coating material progressively increasing in cross-
sectional area from said distal end to said proximal end of said stem.
As noted above, Howmedica initiated a declaratory judgment action to invalidate
the ’985 and ’214 patents or to show noninfringement. Tranquil counterclaimed for
infringement. After construing the claims, the district court determined that the
ambiguities in the term “transverse sectional dimensions” rendered the claims of both
patents indefinite. Construction Order, slip op. at 10. The district court also construed
the ’985 claims to require a coating on the prosthetic before implantation. Id., slip op. at
5-6. The trial court then denied Tranquil’s motion for reconsideration, Howmedica
Osteonics Corp. v. Tranquil Prospects, Ltd., No. 3:02-CV-0321-AS (N.D. Ind. Nov. 24,
2003), and entered final judgment in favor of Howmedica, Howmedica Osteonics Corp.
v. Tranquil Prospects, Ltd., No. 3:02-CV-0321-AS (N.D. Ind. Jan. 14, 2004) (Final
Order).2 Tranquil timely appealed; we have jurisdiction under 28 U.S.C. § 1295(a)(1).
2
The Final Order does not specify the grounds upon which the district court
entered declaratory judgment for Howmedica. However, the parties do not dispute that
the stems of Howmedica’s prostheses are not precoated, and therefore Howmedica
does not infringe any claim of the ’985 patent under the district court’s construction. In
addition to finding the claims of both the ’214 and ’985 patents indefinite, this court
04-1302 5
II
This court reviews a grant of summary judgment without deference to the district
court. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255 (1986); Johns Hopkins Univ.
v. CellPro, Inc., 152 F.3d 1342, 1353 (Fed. Cir. 1998). Summary judgment is
appropriate only where “there is no genuine issue as to any material fact and . . . the
moving party is entitled to judgment as a matter of law.” Fed. R. Civ. P. 56(c); see also
Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986).
A finding of invalidity under 35 U.S.C. § 112, paragraph 2, is a question of law
also reviewed without deference. Union Pac. Res. Co. v. Chesapeake Energy Corp.,
236 F.3d 684, 692 (Fed. Cir. 2001) (citing Personalized Media Communications, LLC v.
Int’l Trade Comm’n, 161 F.3d 696, 702 (Fed. Cir. 1998)). A court determines patent
infringement by construing the claims and then applying that construction to the
accused process or product. Markman v. Westview Instruments, Inc., 52 F.3d 967, 976
(Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370 (1996). This court reviews claim
construction without deference. Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1454
(Fed. Cir. 1998) (en banc).
A
Patent claims must “particularly point[] out and distinctly claim[] the subject
matter which the applicant regards as his invention.” 35 U.S.C. § 112, para. 2 (1982).
“A determination of claim indefiniteness is a legal conclusion that is drawn from the
assumes that the district court’s entry of final judgment for Howmedica also implies a
declaratory judgment of no infringement of the ’985 patent under the district court’s
“precoated stem” limitation. Consequently, this court will address the construction of
terms supporting the district court’s finding of indefiniteness and the terms supporting
the district court’s finding of no infringement of the ’985 patent.
04-1302 6
court’s performance of its duty as the construer of patent claims.” Personalized Media
Communications, 161 F.3d at 705. The perspective of a person of ordinary skill in the
art at the time of the patent application governs the definiteness analysis. W.L. Gore &
Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1556-57 (Fed. Cir. 1983). The
definiteness of a patent claim depends on whether one skilled in the art would
understand the bounds of the claim when read in light of the specification. Union Pac.
Res., 236 F.3d at 692 (citing Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d
1565, 1576 (Fed. Cir. 1986)). “A claim is indefinite if its legal scope is not clear enough
that a person of ordinary skill in the art could determine whether a particular [product or
method] infringes or not.” Geneva Pharms., Inc. v. GlaxoSmithKline PLC, 349 F.3d
1373, 1384 (Fed. Cir. 2003).
The district court found the claims of the ’214 and ’985 patents invalid because it
found that one of ordinary skill in the art would not understand the meaning of the
phrase “transverse sectional dimensions.” Construction Order, slip op. at 9-10. The
claims of the ’214 and ’985 patents require that the “transverse sectional dimensions” of
the coated prosthesis constitute certain percentages of the “transverse sectional
dimensions” of the medullary canal, defined by the cortical bone. ’214 patent, col. 9, ll.
26-36; ’985 patent, col. 9, ll. 17-26. A “transverse section” is a slice taken perpendicular
to the vertical axis of the bone. The parties dispute which “dimensions” of the
“transverse section” define the claimed percentages. Tranquil, relying on citations to
the prosecution histories and expert testimony, argues that the “transverse sectional
dimensions” refer to two-dimensional surface areas, or the cross-sectional area.
Howmedica argues that the term is indefinite because the patent does not specify
04-1302 7
whether the term refers to a two-dimensional measurement of area or single-dimension
linear measurement.
A simple example in the record points out the significant difference between a
one-dimensional measurement and a two-dimensional measurement. Consider, for
example, a cylindrical medullary canal having a diameter of 1 inch, and a cylindrical
implant within that canal having a diameter of 0.75 inch. A one-dimensional linear
measurement of the diameter of the implant is seventy-five percent of the diameter of
the canal, and meets the “at least around seventy percent (70%)” limitation of the
claims. On the other hand, a two-dimensional measurement of the cross-sectional area
of the implant is only about fifty-six percent (56%) of the cross-sectional area of the
canal and does not meet the limitation of the claims. Consequently, one of ordinary skill
in the art must know which measurement to use to determine the boundary of the
claims.
The record shows that one of ordinary skill in the art would readily ascertain from
the written description of the patents that the “transverse sectional dimension” calls for a
two-dimensional measurement. The ’214 and ’985 patents claim an invention that
shapes the prosthesis to fit snugly inside the medullary canal. From the very outset, the
written description of these patents disclose this overriding purpose of the invention.
For instance, the abstract of the ’214 patent states: “The prosthesis device and the
method of implantation utilize an elongate stem undersized precisely with respect to a
precisely formed stem socket defined by the cortical bone . . . .” ’214 patent, col. 3, ll.
52-55. The same abstract emphasizes: “[T]his invention is based on selecting a
prosthesis having a stem part which is shaped and sized to correspond substantially to
04-1302 8
the geometry of the medullary canal . . . and then forming a complementary stem socket
in the canal which will receive the selected prosthesis.” Id. at col. 3, ll. 64-65 (emphasis
added). To make the invention abundantly clear, the patent repeatedly describes a very
tight fit for the prosthesis. See, e.g., id. at col. 3, ll. 67-68 (“[T]he stem must be forcibly
inserted into the socket.”); col. 4, ll. 3-4 (“The compressed coating provides a
compression fit . . . .”); col. 4, ll. 24-30 (“The compression fit initially instantly stabilizes
the stem within its socket . . . .”); col. 4, ll. 31-32 (“By shaping the stem part of the
prosthesis to conform substantially to the geometrical shape of the medullary canal . . .
it is now possible to obtain, at implantation, a generally uniform press fit . . . .”); col. 4, ll.
31-32 (“Such press fit allows the stem to distribute mechanical loads to the cortical bone
. . . .”) (emphases added); ’985 patent, Abstract (“The prosthesis utilizes a tapered
elongate stem undersized precisely with respect to a precisely formed stem socket in
the medullary canal with the stem socket defined by cortical bone . . . .”) (emphasis
added).
These extensive references clarify that the invention requires a very tight fit for
the prosthesis. Given the choice between a construction of “transverse sectional
dimensions” that would require a relatively loose fit and a construction that would
require a much tighter fit, the record shows that one of skill in the art would readily
understand and adopt the latter construction. One of ordinary skill in this art would
recognize that a one-dimensional linear measurement of the “transverse sectional
dimensions” would defeat the purpose of the invention to provide a snug fit of the
prosthesis in the medullary canal. A two-dimensional measurement, on the other hand,
provides the snug fit that is the centerpiece of this invention.
04-1302 9
This proper and evident construction also finds support in numerous references
to the “cross-sectional area” in the prosecution history of both patents. See, e.g., J.A.
75 (“[T]he existence of five sizes of prostheses does not teach anything about . . .
whether those sizes will fill the cross[-]sectional area of the medullary canal.”)
(reexamination of the ’214 patent); J.A. 101 (“Nor is there any discussion of the
desirability of making the cross-sectional area of the prosthesis large in comparison to
the cross-sectional area of the medullary canal as defined by the cortical bone.”)
(reexamination of the ’985 patent) (emphases added). Thus, the applicant and the
patentee both understood that the “cross-sectional dimensions” referred to in the
patents meant cross-sectional areas. These references occurred during a reexami-
nation proceeding. Thus, these references do not directly address the definiteness
requirement – an assessment relevant to the time of filing, not a later reexamination
proceeding. See Hybritech, Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1385
(Fed. Cir. 1986) (analyzing definiteness as of the time of filing). Nonetheless, these
references to “cross-sectional areas” in the discussion between the examiner and the
applicant at a later time are relevant to the meaning of “transverse sectional
dimensions” to one of skill in the art at the earlier time of filing. See Kopykake Enters. v.
Lucks Co., 264 F.3d 1377, 1383 (Fed. Cir. 2001) (“[T]he literal scope of the term is
limited to what it was understood to mean at the time of filing.”) (citing Schering Corp. v.
Amgen Inc., 222 F.3d 1347, 1352-54 (Fed. Cir. 2000)).
To satisfy the definiteness requirement, the term “transverse sectional
dimensions” also need not specify percentage limitations nor the locations along the
prosthesis that the percentage must satisfy to constitute a proper dimensional fit. The
04-1302 10
patent clearly specifies that “[t]he present invention is rooted in the recognition of the
importance and criticality of the stem’s transverse sectional dimensions, along the entire
length thereof, relative to the corresponding transverse sectional dimensions of the
medullary canal . . . .” ’214 patent, col. 3, ll. 33-37 (emphasis added). Similar language
also appears in the claims of both patents. See id. at col. 9, ll. 14-18 (“said stem having
transverse sectional dimensions along substantially its entire length which are
undersized with respect to adjacent corresponding transverse sectional dimensions of
said stem socket”); ’985 patent, col. 9, ll. 11-13 (“said stem having transverse sectional
dimensions along substantially its entire length undersized with respect to
corresponding transverse sectional dimensions of said socket”) (emphases added).
Thus the record shows that the percentage limitations of the “transverse sectional
dimensions” for each portion of the bone specified in the claims must be met along
“substantially the entire length” for each respective portion. Because one of ordinary
skill would understand these requirements from the patent, the claim language is not
indefinite. In sum, this record shows that “transverse sectional dimensions” refers to
two-dimensional measurements, or the cross-sectional area. The district court erred in
holding the claims of the ’214 and ’985 patents invalid under 35 U.S.C. § 112.
B
In construing the term “coated stem” the district court held that “the ’985 patent
calls for a coated stem, and the ’214 patent calls for an uncoated stem.”3 Construction
3
The district court’s generalization of the ’214 patent is inaccurate. The
primary difference between the claims of the ’214 patent and the ’985 patent is that the
claims of the ’214 patent cover methods of implanting prostheses and the claims of the
’985 patent cover apparatuses for implantation. Compare ’214 patent, col. 9, l. 4 – col.
10, l. 55, with ’985 patent, col. 9, l. 4 – col. 10, l. 60. By describing the ’214 patent as
04-1302 11
Order, slip op. at 5-6. This appeal asks whether the “coated stem” limitation in the
claims of the ’985 patent is broad enough to cover prostheses with stems that become
coated by bone cement upon insertion into the stem socket. The “coated stem”
limitation in the ’985 claims, as the parties agree, encompasses a stem coated with
bone cement before insertion into the stem socket.
At the outset, this court notes that claim 4, which depends from claim 1, claims
“[t]he prosthesis as set forth in claim 1 wherein said coating material is bone cement . . .
.” ’985 patent, col. 9, ll. 51-52 (emphasis added). This observation suggests that the
“coated stem” limitation in claim 1 includes stems coated by bone cement. Claim 1,
however, also requires that the “coating material” cover the prosthesis in a “generally
uniform predetermined” thickness. Id. at ll. 27-29. Howmedica argues that bone
cement, when injected into the stem socket before prosthesis insertion, could not
achieve this limitation. Howmedica argues that “the only way the layer of [bone cement]
coating material could be ‘generally uniform’ would be if the medullary canal and the
stem had the exact same shape.” The claim language, however, suggests only
“generally” the same shape for the layer of bone cement in the void between the stem
and walls of the stem socket. Thus, the claims require only a “generally uniform”
thickness, not an exact uniformity as Howmedica apparently argues. In fact, this
relationship between the shape of the stem and the shape of the stem socket mirrors
the description of the invention set forth in the ’985 patent, namely, a “stem part whose
not covering precoated stems the district court did not consider the language of claim 4
that requires “[i]nserting a deformable material and said elongate stem within said stem
socket with said deformable material surrounding the stem for its entire length including
its distal and proximate ends . . . .” Although this court does not here construe this
language because the parties did not raise this issue on appeal, this language may be
broad enough to encompass precoated stems.
04-1302 12
transverse sectional dimensions substantially approximate the transverse sectional
dimension of the medullary canal.” Id. at col. 4, ll. 10-14; see also id. at col. 3, ll. 52-58
(“a prosthesis having a stem part which is shaped and sized to correspond substantially
to the geometry of the medullary canal in the patient’s bone”), col. 4, ll. 24-26 (“stem
part of the prosthesis to conform substantially to the geometrical shape of the medullary
canal”) & ll. 45-50 (stem socket made having a “predetermined shape” to conform to the
shape of the prosthesis) (emphases added). Consequently, the record shows that the
language of claim 1 can accommodate coating the stem by injecting bone cement into
the stem socket before insertion of the prosthesis. This particular coating method could
satisfy the “generally uniform” limitation of claim 1 of the ’985 patent.
The “predetermined” limitation also erects no barrier to a process that does not
coat the stem until insertion into a stem socket filled with bone cement. Although this
language requires determination of the coating thickness before stem insertion, the
invention disclosure explains a way to satisfy this requirement by inserting the stem into
a socket already charged with bone cement. As discussed supra, the ’985 patent
specifically states that the shape of the medullary canal (which is rasped to form a
suitable stem socket) governs the selection of a suitable prosthesis. See, e.g., ’985
patent, col. 3, ll. 52-58 (“Broadly, the improved method of surgical orthopedic
implantation of this invention is based on selecting a prosthesis having a stem part
which is shaped and sized to correspond substantially to the geometry of the medullary
canal in the patient’s bone . . . and then forming a complementary stem socket in the
canal which will receive the selected prosthesis.”), col. 4, ll. 39-50 (“When utilizing the
method of selecting the shape and size of the prosthesis and of preparing the stem
04-1302 13
socket in accordance with this invention, significant improvements in stem stabilization
and in stem fixation can be obtained, even when using uncoated stems that are to be
implanted with the aid of bone cement. After the proper prosthesis is selected, the
medullary canal in the femur is reamed and rasped to form a stem socket having a
predetermined shape and length to receive therein . . . the slightly undersized uncoated
stem together with a thin cement layer.”) (emphases added). Thus, the ’985 patent
suggests use of “a suitable radiograph” to predict the “proper prosthesis shape” and
using the “instruments subsequently used to develop [the] socket 25 [to] verify whether
the proper shape for [the] prosthesis 10 was predicted with the radiograph.” Id. at col.
7, ll. 12-16. By selecting a prosthesis of a particular size and shape for insertion into a
particular medullary canal, the insertion process predetermines the width of the void and
the thickness of the layer of bone cement filling that void and coating the stem. Thus,
this court perceives that claim 1 can cover a prosthesis whose stem is coated by
inserting the prosthesis into a canal already charged with bone cement.
Finally, this court reaches this conclusion with the understanding that the written
description of the ’985 patent includes references to “coated” and “uncoated” stems.
The ’985 patent discusses two general embodiments of the invention -- one
embodiment with stems coated before insertion and another with stems that are not
coated before insertion. See, e.g., ’985 patent, col. 4, ll. 15-30 (stem coated before
insertion), ll. 39-50 (stem not coated before insertion). The references in the ’985 patent
to a “coated stem” merely refer to the stem and its coating, not to the naked stem or the
coating alone. See, e.g., ’985 patent, col. 4, ll. 15-21 (“In a preferred embodiment, the
stem’s base material is a suitable metal whose transverse sectional dimensions along
04-1302 14
its entire length are only slightly undersized relative to the transverse sectional
dimensions of the prepared stem socket. The stem’s base material is fully covered with
a thin coating. The transverse sections of the coated stem part are oversized in relation
to the corresponding sections of the prepared socket . . . .”) (emphases added). In
contrast the embodiment using an “uncoated” stem requires that “[t]he uncoated stem
18 will have to be implanted by the use of a bone cement to form a cement liner around
stem 18.” Id. at col. 8, ll. 32-35 (emphasis added). Indeed, a stem lined with cement
after insertion satisfies the “coated” limitation. Both parties agreed that placing a layer
of bone cement on the stem before insertion meets the “coated stem” limitation of claim
1. Because claim 1 is an apparatus claim without process limitations, this court detects
no difference in “coating” for a stem covered with bone cement before insertion and a
stem covered with bone cement upon insertion into the stem socket. Consequently, this
court vacates the portion of the district court’s claim construction precluding stems
coated with bone cement, either before or after insertion, from satisfying the “coated
stem” limitation.
III
In sum, this court reverses the district court’s finding of summary judgment that
the claims of the ’214 and ’985 patents are indefinite and invalid under 35 U.S.C. § 112.
This court construes the term “transverse sectional dimensions” to refer to the cross-
sectional area of the prosthesis along the entire length of the portions of the bone
specified by the claims. This court vacates the district court’s grant of summary
judgment of no infringement of the claims of the ’985 patent in view of its erroneous
claim construction which precludes infringement for stems coated with bone cement,
04-1302 15
either before or after insertion. Finally, this court remands this case to the district court
for further proceedings.
COSTS
Each party shall bear its own costs.
REVERSED-IN-PART, VACATED-IN-PART, and REMANDED
04-1302 16