Docket No. 2013-1668
PROST, NEWMAN, HUGHES
December 19, 2014
Update: SCOTUS cert. granted 10/19/15
Brief Summary: Findings of infringement affirmed but willfulness determination reversed because “Zimmer presented reasonable defenses to all of the asserted claims of Stryker’s patents”.
Summary: Zimmer appealed jury decision that Stryker’s US 6,022,329; 6,179,807; and 7,144,383 relating to portable, battery-powered, handheld “pulsed lavage devices” for medical procedures such as cleaning wounds were valid and willfully infringed, and the DC denial of its motion for JMOL. Zimmer argued to the DC that the plain and ordinary meaning of the term “handle” distinguished between the “handle” and the “barrel” of the claimed device and should control (as did the specification and the prosecution history). However, the DC defined “handle” as “a portion of a device designed to be held by a hand or hands” that “did not need to have a discreet barrel joined to the handle”. The FC panel found error with the DC analysis of the ‘329 prosecution history, explaining “[t]here is no reason why a disclaimer on a limitation within a narrower claim would not apply to the same limitation within the broader claim, as the same concerns about the prior art would related to both” (citing Gemalto, FC 2014 (prosecution history regarding a claim limitation applies to any subsequently issued related patent)). However, the decision was affirmed but Zimmer’s arguments were not considered unreasonable (relevant to the willful infringement issue). The FC also affirmed the DC findings regarding the term “receive” in the ‘807 patent and found that a reasonable jury could have found no clear and convincing evidence that a prior art device anticipated the ‘807 claims. Zimmer also argued the ‘383 claims would have been obvious but the FC panel agreed with the DC that a reasonable jury could have concluded one of ordinary skill in the art would not have been motivated to combine the prior art (“even in light of the examiner’s rejection of related claims [in a subsequent continuation application] on the basis of this combination” (the PTO and DCs “take different approaches in determining invalidity and on the same evidence could quite correctly come to different conclusions” (Ethicon, FC 1988)). Willfulness was analyzed under the Seagate (FC 2007, en banc) standard, “showing ‘by clear and convincing evidence that the infringer acted despite an objectively high likelihood that its actions constituted infringement of a valid patent” (“[t]he state of mind of the accused infringer is not relevant to this objective inquiry”) and then determining whether “this objectively-defined risk…was either known or so obvious that it should have been known by the accused infringer” (“recklessness will not be found where the accused infringer’s ‘position is susceptible to a reasonable conclusion of no infringement’” (Uniloc, FC 2011)). The FC panel concluded the DC “failed to undertake an objective assessment of Zimmer’s specific defenses” and that “Zimmer presented reasonable defenses to all of the asserted claims of Stryker’s patents”. It therefore concluded that Zimmer did not act recklessly, reversed the fnding of willful infringement and vacated the award of attorneys’ fees. The case was remanded because “there exist futher allegations of litigation misconduct…and because the standard for finding an exception case has changed since the [DC] issued its finding”.