Docket No. 2015-1232, -1234, -1239
O’MALLEY, PLAGER, WALLACH
May 12, 2016
Brief Summary: DC claim construction (“there is a fine line between reading a claim in light of the written description and reading a limitation into the claim from” it), finding of no infringement, and grant of SJ affirmed.
Summary: Howmedica appealed DC judgment that Zimmer did not infringe the claims of US 6,475,243 relating to a socket assembly used in prosthetic hip implants. Stryker contended the DC errered in its construction of the “relative location” of “a recess and a tapered surface” (for securing the “shell member” and the “bearing member…which together replace the socket…part of the pelvis bone) “‘such that the effectiveness’ of each is ‘maintained while in the presence of the other’” of claims 20, 27, 41 and 53 to require that “the recess is essentially midway along the taper such that the effectiveness of each is not compromised”. The DC also “required the presence of a sleeve in between the shell and the bearing, for the taper type of securing.” Infringement was not found because of the “essentially midway” and “sleeve” constructions. The FC panel found the “essentially midway” construction dispositive and therefore did not address the “sleeve” construction. The opinion explained that while “the [written description] ‘is always highly relevant to the claim construction analysis’” (“the single best guide”), “there is a fine line between reading a claim in light of the written description and reading a limitation into the claim from” it. The FC panel found that the how the “recess” and taper” are “juxtaposed” with one another and “placed at relative locations” was not clear from “the claims themselves” but explained that “every description and every figure in the patent that discusses the issue places the recess ‘essentially midway’ along the taper.” Styker argued the focus should be on the plain language of the claims and dictionary definitions of the terms but the FC noted that “focusing on a particular term’s plain and ordinary meaning may be inadequate, when [as here] relying on that meaning does not resolve the parties’ dispute” (O2 Micro, FC 2008), a “problem…only resolved by examining the written description-i.e., reading the claims in context” (Hologic, FC 2011). The FC panel did not agree with Stryker that the DC interpretation limited the claims to the preferred embodiments. Stryker also argued the DC construction violated the doctrine of claim differentiation but the FC disagreed because that “is a rebuttable presumption that may be overcome by a contrary construction dictated by the written description or prosecution history” (Retractable Techs., FC 2011), and was rebutted here. Stryker also argued the DC abused its discretion by preventing it from asserting infringement under DOE. The DC also “determined that Stryker’s failure to amend its infringement contentions to include a DOE infringement theory precluded Stryker from asserting that theory in opposition to Zimmer et al.’s motions for” SJ. Considered under the DC’s local rules requiring DOE allegations to be part of the original infringement contentions, the FC panel found the DC did not abuse its discretion on this point. The DC’s grant of SJ was also affirmed.