122 F.3d 1440 (Fed. Cir. 1997), 97-1007, Wright Medical Technology, Inc. v. Osteonics Corp.

Docket Nº:97-1007.
Citation:122 F.3d 1440
Party Name:43 U.S.P.Q.2d 1837 WRIGHT MEDICAL TECHNOLOGY, INC. and Dow Corning Corp. (formerly Dow Corning Wright Corp.), Plaintiffs-Appellants, v. OSTEONICS CORPORATION, Defendant-Appellee.
Case Date:August 27, 1997
Court:United States Courts of Appeals, Court of Appeals for the Federal Circuit

Page 1440

122 F.3d 1440 (Fed. Cir. 1997)

43 U.S.P.Q.2d 1837


(formerly Dow Corning Wright Corp.), Plaintiffs-Appellants,



No. 97-1007.

United States Court of Appeals, Federal Circuit

August 27, 1997

Page 1441

Frank P. Porcelli, Fish & Richardson, P.C., of Boston, MA, argued for plaintiffs-appellants. With him on the brief were John M. Skenyon and Mark J. Hebert.

William L. Mentlik, Lerner, David, Littenberg, Krumholz & Mentlik, of Westfield, NJ, argued for defendant-appellee. With him on brief were Roy H. Wepner and Paul H. Kochanski. Of counsel was Keith E. Gilman.

Before NEWMAN, LOURIE, and SCHALL, Circuit Judges.

LOURIE, Circuit Judge.

Wright Medical Technology, Inc. and Dow Corning Corp. (collectively "Wright") appeal from the summary judgment of the United States District Court for the District of Massachusetts that Osteonics Corp. does not infringe U.S. Patent 4,474,177, either literally or under the doctrine of equivalents. See Dow Corning Wright Corp. v. Osteonics Corp., 939 F.Supp 65 (D.Mass.1996). Because the district court did not err in construing two of the limitations of the claims at issue (although it did err in construing a third limitation), we affirm its judgment that Osteonics does not literally infringe the patent. However, the district court erred in concluding that Wright had waived its claim for infringement under the doctrine of equivalents and in failing to provide a legally sufficient analysis to support the grant of summary judgment on that issue. Accordingly, we affirm-in-part, reverse-in-part, and remand for consideration of infringement under the doctrine of equivalents.


The '177 patent, which is assigned to Wright Medical Technology, Inc., is directed to methods and instruments for reshaping the distal surface of a human femur (thigh bone) so that an artificial knee may properly be attached to it. To function properly, the artificial knee must be aligned with respect to the central long axis of the femur, which is offset from the vertical axis of the body by the so-called varus/valgus angle. According to the invention, proper alignment of the artificial knee is achieved, at least in part, by inserting a rod into the femur's intramedullary canal and then obtaining an appropriately reshaped distal surface by using a variety of cutting and shaping instruments.

These instruments are designed to fit onto the intramedullary rod's external guide handle, which is a modified cylinder with two parallel, flattened sides and two intact,

Page 1442

rounded sides. All but one of the instruments described in the patent may be locked in place on the guide handle by means of a locking bolt which prevents rotation about the guide handle. The remaining instrument, the so-called "plateau planer," is designed not to be locked in place, but rather to be freely rotated "... about the central long axis of the guide handle and thus rotated about the central long axis of the femur." '177 patent, col. 6, lns. 22-25.

In 1991, Wright 1 sued Osteonics for patent infringement, alleging that Osteonics' STAT-IM artificial knee surgery device infringed claims 6-8 and 10. Independent claim 6, from which the other asserted claims depend, reads in pertinent part (with emphasis on the disputed claim terms):

As an article of manufacture, a distal femoral surface shaping guide comprising the combination of

(A) an intramedullary alignment guide comprising (1) an intramedullary rod portion adapted to closely fit in and extend through the narrowest portion of the human femur such that the central long axis of said femur passes through the central long axis of said intramedullary rod portion, (2) a guide handle attached to and set at a preselected angle with respect to said axis of the intramedullary rod portion and being adapted to receive at least one femoral surface modifying instrument in proper alignment with respect to said handle and (3) a means for securing the combination of (1) and (2) in a fixed position in the femur with

(B) at least one femoral surface modifying instrument which is adapted to cooperatively engage such handle and to assume an appropriate fixed relationship with respect to the distal femoral surface and to the central long axis of the femur....

In 1993, the district court conducted a trial limited to the issue of infringement. Although the parties did not dispute how the STAT-IM device worked, they did contest the proper construction of the claims and, in particular, the terms "closely fit in," "extend through," and "in proper alignment." The jury returned general verdicts stating that each of the asserted claims was not infringed literally or under the doctrine of equivalents. Wright appealed from the denial of its motion for a new trial. Relying on the recently-decided Markman v. Westview Instruments, Inc., 52 F.3d 967, 983-84, 34 USPQ2d 1321, 1333 (Fed.Cir.1995) (in banc), aff'd, 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577, 38 USPQ2d 1461 (1996), we held in a non-precedential opinion that the district court abused its discretion in denying the motion for a new trial because it did not construe the claims as a matter of law before submitting the issues of infringement to the jury. See Dow...

To continue reading