Sofamor Danek Group, Inc. v. DePuy-Motech, Inc.

• Decision Date: 24 January 1996
• Docket Number: INC,PUY-MOTEC,No. 95-1209,95-1209
• Citation: 74 F.3d 1216,37 USPQ2d 1529
• Parties: , 37 U.S.P.Q.2d 1529 SOFAMOR DANEK GROUP, INC., Plaintiff-Appellant, v. De, Defendant-Appellee.
• Court: U.S. Court of Appeals — Federal Circuit

Page 1216

74 F.3d 1216

64 USLW 2528, 37 U.S.P.Q.2d 1529

SOFAMOR DANEK GROUP, INC., Plaintiff-Appellant, v. DePUY-MOTECH, INC., Defendant-Appellee.

No. 95-1209.

United States Court of Appeals Federal Circuit.

Jan. 24, 1996.

Spiro Bereveskos, Woodard, Emhardt, Naughton, Moriarty & McNett, of Indianapolis, Indiana, argued for plaintiff-appellant. With him on the brief were Charles R. Reeves, Michael D. Beck and Timothy N. Thomas.

Donald E. Knebel, Barnes & Thornburg, of Indianapolis, Indiana, argued for defendant-appellee. With him on the brief was Mark D. Janis.

Before NEWMAN, RADER, and BRYSON, Circuit Judges.

RADER, Circuit Judge.

On December 29, 1994, the United States District Court for the Southern District of Indiana denied Sofamor Danek Group, Inc.'s (Sofamor) motion for a preliminary injunction against DePuy-Motech, Inc. (DePuy-Motech). Because Sofamor did not meet its burdens of proof, this court affirms.

BACKGROUND

Sofamor owns three patents, U.S. Patent Nos. 4,641,636, 4,815,453, and 5,005,562, on surgical implant devices to correct deformities or traumas in the human spine. The patent at issue is U.S. Patent No. 5,005,562 (the '562 patent). Sofamor and DePuy-Motech compete in the spinal implant business. DePuy-Motech introduced a competing product, the MOSS-MIAMI spinal implant device, in the United States market.

Both the invention of the '562 patent and the MOSS-MIAMI device are used in spinal surgery. This technology essentially implants rigid rods to straighten or support a deformed spine. Both the patented invention and the MOSS-MIAMI device comprise an anchoring hook implant with an open back into which the surgeon may place the rod. A threaded plug secures the rod. In the MOSS-MIAMI device, an external nut further secures the threaded plug.

Sofamor filed an action alleging that DePuy-Motech infringed their three spinal implant Sofamor and DePuy-Motech dispute whether the MOSS-MIAMI device infringes claim 1 of the '562 patent. The claim states:

patents. Sofamor then moved for a preliminary injunction on the '562 patent to stop DePuy-Motech from the allegedly infringing activity. DePuy-Motech asserted invalidity and unenforceability defenses as well as patent misuse.

Implant for an osteosynthesis device, in particular of the spine, comprising anchorage portion means for anchoring the implant to bone and body attaching means for attaching the implant to a rod, said body attaching means having two side branches defining a channel open at both sides of the body attaching means in order to be able to receive the rod and open to a rear portion of the body attaching means, and a threaded plug, a female thread formed in inner walls of said two side branches at the rear portion of the body attaching means, said threaded plug being screwed into said female thread to close the channel at said rear portion, the plug having a face directed towards the rod said facing being equipped with means for gripping and attaching the plug to the rod in a manner in which the rod will be clamped to prevent translation and rotation.

Col. 4, 11. 14-29 (emphasis added).

In December 1994, the trial court held a three-day hearing receiving testimony from several witnesses. The court denied Sofamor's motion for preliminary injunction. In reaching its decision, the trial court construed the claims of the '562 patent. From the specification, prosecution history, and extrinsic evidence the court determined that a device fitting within the meaning of "body attaching means" would:

1. use less than three parts to attach the rod to the spine;

2. have a body attaching means connected to an anchoring device, the rear portion of which has a channel or groove, open to the back;

3. have a body attaching means that is formed by two smooth-sided branches containing threads on their inner walls, into which a single threaded plug is tightened to close the channel; and

4. use a plug that is equipped with something that enables it to lock the rod against movement in three different directions.

Sofamor Danek Group, Inc. v. DePuy-Motech, Inc., No. IP94-350-C, 1994 WL 846541, at * 6 (S.D.Ind. Dec. 29, 1994).

Based on this claim reading, the trial court found that Sofamor did not prove the likelihood of success on patent infringement or validity. Further, Sofamor did not offer evidence to support a finding of irreparable harm. Without a showing on these two prongs, the court did not balance hardships on the parties or assess the impact of an injunction on the public interest. Sofamor appeals to this court.

DISCUSSION

The grant of a preliminary injunction is within the trial court's discretion. To overturn the denial of a preliminary injunction, an appellant must show both that the trial court relied on clearly erroneous factors and abused its discretion. Reebok Int'l Ltd. v. J. Baker, Inc., 32 F.3d 1552, 1555, 31 USPQ2d 1781, 1783 (Fed.Cir.1994); New England Braiding Co. v. A.W. Chesterton Co., 970 F.2d 878, 882, 23 USPQ2d 1622, 1625 (Fed.Cir.1992).

To be entitled to a preliminary injunction, a movant must show: (1) a reasonable likelihood of success on the merits, (2) an irreparable harm, (3) the balance of hardships tipping in its favor; and (4) a tolerable effect on the public interest. Hybritech Inc. v. Abbott Labs., 849 F.2d 1446, 1451, 7 USPQ2d 1191, 1195 (Fed.Cir.1988). The court must balance these factors against one another and against the extent of the relief sought. Id. The movant bears the burden of proving entitlement to relief. Reebok Int'l, 32 F.3d at 1555.

Central to the movant's burden are the likelihood of success and irreparable harm factors. Id. at 1556. A movant must first show a reasonable likelihood of success on the merits. Under 35 U.S.C. Sec. 283, this showing requires proof on both validity and infringement. Hybritech, 849 F.2d at 1451.

To determine likelihood of success on the patent infringement issue, the court may construe disputed claim language as a matter of law. See Markman v. Westview Instruments, Inc., 52 F.3d 967, 978, 34 USPQ2d 1321, 1328 (Fed.Cir.), cert. granted, --- U.S. ----, 116 S.Ct. 40, 132 L.Ed.2d 921 (1995). The court then determines whether the accused device is likely to fall within the scope of the claims. H.H. Robertson Co. v. United Steel Deck, Inc., 820 F.2d 384, 389, 2 USPQ2d 1926, 1929 (Fed.Cir.1987). To infringe, an accused device must embody each claim limitation or its equivalent. Charles Greiner & Co. v. Mari-Med Mfg., Inc., 962 F.2d 1031, 1034, 22 USPQ2d 1526, 1528 (Fed.Cir.1992).

Likelihood of success on infringement thus depends on the meaning of disputed claim terms supplied by the court. In ascertaining this meaning, the parties dispute the meaning of two claim terms: the "body attaching means" and the "threaded plug." The "body attaching means" element claims, in means-plus-function form, a structure to attach the implanted anchor to the rod.

Section 112, p 6 of title 35 sets forth the method of construing means-plus-function claims. Specifically, the court construes the means-plus-function language to encompass the structure, material, or acts described in the specification and equivalents thereof. See 35 U.S.C. Sec. 112, p 6 (1988); In re Donaldson Co., 16 F.3d 1189, 1193, 29 USPQ2d 1845, 1848 (Fed.Cir.1994).

A resort to the '562 specification discloses several disadvantages of the prior art of spine reformation technology. For example, the prior art included a "multiplicity and complexity of the elements" resulting in "awkward bulkiness". U.S. Patent No. 5,005,562, col. 1, 11. 30-33. To overcome these disadvantages, the '562 patent disclosed only a threaded plug screwed into a "female thread formed in the inner walls of the two side branches" of the attaching means. This simple structure ensured that the implant has "minimum bulk." Id., col. 1, 11. 40-42, 48-50. This structure also had the virtue of reducing the parts compared to an implant "provided with a plug and a separate locking screw." Id., col. 3, 11. 64-67. Thus, the specification expressly excluded from the meaning of "body attaching means" a structure with a separate locking screw. Id. This description in the specification provides the structure to define the limits of "body attaching means" in the patent.

In contrast to the '562 patent, the MOSS-MIAMI device has a bulky, external nut as a separate locking screw that fits over the threaded plug. DePuy-Motech included this nut to provide stability. The specification of the '562 patent defines the "body attaching means" as expressly excluding a structure with a separate locking screw. The MOSS-MIAMI device includes a separate locking screw and is thus different from the structure covered by the term "body attaching means" in the '562 patent. The trial court was well within its province to determine that Sofamor did not show a reasonable likelihood of success on infringement of the "body attaching means" limitation.

In addition to examining the claim and specification, the trial court expanded the search for claim meaning to encompass prosecution history on "body attachment means." Moreover this search caused the trial court to improperly import limitations from the prosecution history and overly constrict the meaning of "body attaching means". The trial court gave undue weight to statements during prosecution of the '562 patent. The prior art locked the rod inside an anchoring member with "at least one and preferably two additional locking elements." To distinguish this prior art, the patentee characterized the prior art system as requiring "at a minimum three distinct elements." From these statements, the trial court concluded that an accused device would literally infringe the '562 patent only if it used "less than three parts to attach the rod to the spine." Sofamor Danek Group, 1994 WL 846541, at * 6. This history, however, merely distinguishes the claimed invention from a prior art reference with at least three parts. Neither the...