Docket No. 2013-1668
PROST, NEWMAN, HUGHES
September 12, 2016
Brief Summary: FC panel affirmed DC finding of infringement, willfulness and no invalidity affirmed. Award of treble damages and attorneys fees vacated and remanded “because the standard for finding an exceptional case has changed” since the first DC ruling (i.e., Seagate standard vs. Halo).
Summary: This appeal was on remand from SCOTUS after vacating the FC’s prior decision on the willfulness issue based on the “Seagate framework”, as Halo (US 2016 (“the Seagate test ‘unduly confines the ability of [DCs] to exercise the discretion conferred on them”)) had not yet been handed down. The original appeal was from the DC 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” were valid and willfully infringed. The jury awarded treble damages and attorney’s fees. The FC reversed the willfulness finding and vacated the award of treble damages and attorney’s fees. Styker was denied a rehearing en banc but granted certiorari. The FC opinion first addresses Zimmer’s appeal regarding claim construction, infringement and validity, which are not addressed in detail here. The FC panel affirmed the DC’s “judgment on the various defenses of noninfringement and invalidity that Zimmer raises across the three asserted patents” (i.e., that the patents were infringed and not invalid for anticipation or obviousness). While it agreed with the DC that Zimmer was liable for willful infringement, it also explained that “it does not necessarily follow that the case is exceptional” which may be deterimined by the DC at its “discretion, considering the totality of the circumstances” (Octane Fitness, US 2014) and “that each of [Zimmer’s] defenses was not unreasonable.” And “[b]ecause there exist further allegations of litigation misconduct…and because the standard for finding an exceptional case has changed” since the first DC ruling, the issue was remanded. The FC also opinion explained that FN3 addresses Zimmer’s argument that Stryker’s products were not sufficiently marked by the ‘383 patent, agreeing with Zimmer and explaining that marking with a related patent is not sufficient under 35 USC § 287(a).