Acumed v. Stryker (Fed. Cir. 2007).
Acumed and Stryker both manufacture equipment for orthopedic surgery. Based on its patented nail technology for reconstructing humerus fractures, Acumed sued Stryker for patent infringement. A jury found the claims valid and that Stryker was a literal and willful infringer. Based on the verdict, the Oregon judge assessed enhanced damages and entered a permanent injunction against the adjudged infringer. Stryker appealed infringement and willfulness.
Claim Construction: The most-disputed aspect of the case involved the court's interpretation of the claim term "transverse holes." Every figure showed the holes, showed them extending "perpendicularly through the shaft." Similarly, the description noted that the holes were "perpendicular." Based on this intrinsic evidence and the precedential value of Phillips, Stryker argued that the claim term should be given a narrow meaning.
On appeal, the CAFC refused to limit "transverse holes" to holes that were arranged perpendicularly. In doing so, the court reestablished that the paramount rule of construction is that claims are given their plain meaning.
The plain meaning ... covers more than the particular embodiment shown.... While the disclosed embodiment possesses “perpendicular” holes, the claim language covers all “transverse” holes—a word that does not necessarily imply right angles. Moreover, the patentees’ description of their preferred embodiment itself implies a difference between the words “perpendicular” and “transverse.”
In its analysis, the Court implied reasoning similar to that of claim differentiation. Here, however, the analysis compared the use of "perpendicular" in the specification with the word "transverse" as used in the claims.
The written description states that Figure 2 “illustrates a plurality of transverse holes, each of which is . . . perpendicular to the portion of the nail axis at the butt portion 14 of the nail.” ’444 patent col.2 ll.56-59. This implies that a “transverse” hole need not be “perpendicular”—if it were, the patentee would not have needed to clarify that these holes, in addition to being transverse, were perpendicular to the nail axis.
This case follows the same pattern as the en banc decision of Phillips v. AWH:
Just as in Phillips, where the asserted claim mentioned “steel baffles” and hence “strongly implie[d] that the term ‘baffles’ does not inherently mean objects made of steel,” this usage of language is strong evidence that the patentee considered “transverse” and “perpendicular” to have distinctly different meanings.
Narrowing Intrinsic Evidence: The court refused to give credence to the interpretation of the term "transverse" found in prior art that was cited on the face of the patent because the reference was not “created by the patentee in attempting to explain and obtain the patent.”
Judge Kimberly Moore dissented from this claim interpretation. Judge Moore would have held that the intrinsic evidence "fully supports" defining "transverse" as “made at right angles to the anterior-posterior axis of the body”.
The majority suggests that the use of both words “implies a difference between the words ‘perpendicular’ and ‘transverse.’” The majority contends that if transverse was meant to be construed as perpendicular, “the patentee would not have needed to clarify that these holes, in addition to being transverse, were perpendicular to the nail axis.” I disagree... [T]he patentee used the two words to clearly specify which of the definitions of transverse applied to his invention; the purpose of using the word “perpendicular” was to further describe what the inventor meant by the term “transverse,” not to distinguish it as the majority suggests.
[T]wo patent attorneys ... at first strongly discouraged Stryker from marketing the infringing nail in the United States. Despite that advice, Stryker continued to push towards a United States market entry, filing its FDA application months before it received ... revised [non-infringement] legal advice....The judgment of willfulness is therefore affirmed.
Permanent Injunction: Because the case was decided before eBay, the CAFC remanded for a finding on the equities.