Howmedica Osteonics Corp. v. Zimmer, Inc.

• Decision Date: 12 May 2016
• Docket Number: Nos. 2015–1232,2015–1234,2015–1239.,s. 2015–1232
• Citation: 119 U.S.P.Q.2d 1290,822 F.3d 1312
• Parties: HOWMEDICA OSTEONICS CORP., Stryker Ireland Ltd., Plaintiffs–Appellants v. ZIMMER, INC., Wright Medical Technology, Inc., Smith & Nephew, Inc., Defendants–Appellees.
• Court: U.S. Court of Appeals — Federal Circuit

822 F.3d 1312

119 U.S.P.Q.2d 1290

HOWMEDICA OSTEONICS CORP., Stryker Ireland Ltd., Plaintiffs–Appellants

v.ZIMMER, INC., Wright Medical Technology, Inc., Smith & Nephew, Inc., Defendants–Appellees.

Nos. 2015–1232

2015–1234

2015–1239.

United States Court of Appeals, Federal Circuit.

May 12, 2016.

George C. Lombardi, Winston & Strawn LLP, Chicago, IL, for plaintiffs-appellants Howmedica Osteonics Corp., Stryker Ireland Ltd. Also represented by Karl Leonard ; Michelle C. Replogle, Houston, TX; Scott R. Samay, New York, NY; Jovial Wong, Washington, DC; William L. Mentlik, Roy H. Wepner, Lerner, David, Littenberg, Krumholz & Mentlik LLP, Westfield, NJ.

J. Michael Jakes, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Washington, DC, for defendant-appellee Zimmer, Inc. Also represented by Amanda K. Murphy. Defendant–Appellee Wright Medical Technology, Inc., represented by Anthony J. Fitzpatrick, Christopher S. Kroon, Duane Morris, LLP, Boston, MA; Samuel W. Apicelli, Philadelphia, PA. Defendant–Appellee Smith & Nephew, Inc., represented by Bradley T. Lennie, Hunton & Williams, LLP, Washington, DC; David A. Kelly, Atlanta, GA; Arnold B. Calmann, Saiber, LLC, Newark, NJ.

Before O'MALLEY, PLAGER, and WALLACH, Circuit Judges.

PLAGER, Circuit Judge.

This is a patent case. Plaintiffs–Appellants Howmedica Osteonics Corp. and Stryker Ireland Ltd. (collectively, “Stryker”) appeal the district court's final judgment.¹ The district court held that Defendants–Appellees Smith & Nephew, Inc. (“Smith”); Wright Medical Technology, Inc. (“Wright”); and Zimmer, Inc. (“Zimmer”) (collectively “Zimmer et al.”) did not infringe the asserted claims of U.S. Patent No. 6,475,243 (“'243 patent”).²

The district court granted summary judgment of non-infringement following claim construction. On appeal, Stryker contends that the district court erred in its claim construction and abused its discretion by forbidding Stryker from asserting infringement under the doctrine of equivalents.

Background

I. Technology and Prosecution History

The '243 patent concerns a socket assembly used in prosthetic hip implants. The patent addresses three major components involved: a shell member and a bearing member, which together replace the socket (technically the acetabulum) part of the pelvis bone, and the femoral component, the ball-shaped end of the thigh bone that marries with the socket. In a prosthetic hip replacement, a shell device is implanted into a patient's pelvic bone; a bearing device is then secured into that shell; and that bearing then receives the ball-shaped end of a patient's femur (which end may be replaced with an artificial ball device).

According to the patent, securing the bearing to the shell is particularly important. The securement mechanism depends upon the type of bearing chosen by the physician. In some instances, a bearing may be secured by means of a rib-recess securement. The bearing's exterior surface, which comes into contact with the shell's interior surface, contains a protruding rib. That rib fits into a recess within the shell's interior surface. This attachment mechanism works when the bearing is of a flexible type, such as a polyurethane substance.

In other instances, a bearing may be secured by means of complementary tapered surfaces. A portion of the bearing's exterior surface, which comes into contact with the shell's interior surface, is tapered in a manner complementary to a tapered portion of a shell's interior surface. This may be used when the bearing is of a ceramic or metal type.

In at least some instances, a fourth component may be involved—a metallic securing device or sleeve, which fits in between the shell and the bearing.

Regardless of whether a sleeve is necessary, the patented shell can accommodate either type of securement since the shell may contain both a recess and a tapered surface. However, the location of the recess relative to the taper within the shell is important. The patent claims specify that the recess and the taper (or the first and second securing “structures” or “elements”) are to be “juxtaposed” or in “juxtaposition” with one another and “placed at relative locations such that the effectiveness” of each is “maintained while in the presence of the other.”³ Examples:

Claim 20: “the first and second securing structures being juxtaposed with one another and placed at relative locations such that the effectiveness of each of the first and second securing elements is maintained while in the presence of the other of the first and second securing elements”;

Claim 27: “the first and second securing elements being juxtaposed with one another and placed at relative locations such that the effectiveness of each of the first and second securing elements is maintained while in the presence of the other of the first and second securing elements”;

Claim 41: “the securement recess and the internal securement taper being juxtaposed with one another and placed at relative locations such that the effectiveness of each of the securement recess and the internal securement taper is maintained while in the presence of the other of the securement recess and the internal securement taper”; and

Claim 53: “the securement recess and the internal securement taper are in juxtaposition with one another and placed at relative locations such that the effectiveness of each of the securement recess and the internal securement taper is maintained while in the presence of the other of the securement recess and the internal securement taper.”

'243 Ex Parte Reexamination Certificate at 1:47–55 (claim 20), 3:11–17 (claim 41), 5:48–6:5 (claim 53); '243 patent at 17:3–8 (claim 27).

In two separate passages, the written description explains that the recess is to be placed “essentially midway” along the taper. First, in discussing shell member 22, the patent states:

Seating surface 110 includes an upper end 112 and a lower end 114 and is divided by the recess 62 into an upper segment 116 and a lower segment 118 (see FIG. 4). By placing the recess 62 essentially midway between the upper end 112 and the lower end 114, engagement of the seating surfaces 106 and 110, and the locking of the seating surfaces 106 and 110 in response to such engagement, is facilitated by virtue of the locking being accomplished along segments 116 and 118 having generally the same, and therefore maximized, axial length. In this manner, the effectiveness of the seating surface 110 in assuring appropriate alignment between the sleeve 100 and the shell member 22 as the sleeve 100 is inserted into the shell member 22 and in subsequently attaining the desired locking engagement with seating surface 106 is not compromised by the presence of the recess 62.

'243 patent at 7:8–23 (emphasis added).

The patent explains that seating surface 110, located in the shell's interior surface, is provided with a tapered configuration for mating with another tapered surface. Id. at 6:20–7:5. These components are pictured:

Second, in discussing shell member 212, the patent states:

Seating surface 354 includes an upper end 360 and a lower end 362 and is divided by the recess 262 into an upper segment 364 and a lower segment 366. By placing the recess 262 essentially midway between the upper end 360 and the lower end 362, engagement of the seating surfaces 350 and 354, and the locking of the seating surfaces 350 and 354 in response to such engagement is facilitated, by virtue of the locking being accomplished along segments 364 and 366 having generally the same, and therefore maximized, axial length. In this manner, the effectiveness of the seating surface 354 in assuring appropriate alignment between the sleeve 340 and the shell 212 as the sleeve 340 is inserted into the shell 212 and in subsequently attaining the desired locking engagement with seating surface 350 is not compromised by the presence of the recess 262.

Id. at 11:28–42 (emphasis added).

The patent explains that seating surface 354, located in the shell's interior surface, is provided with a tapered configuration for mating with another tapered surface. Id. at 11:12–25.

These components are pictured:

The '243 patent issued as a continuation-in-part of U.S. Patent Application Ser. No. 09/083,406. The patent was later amended during ex parte reexamination. When compared with its parent, the '243 patent, as amended after reexamination, contained at least four important changes. First, Stryker added all of the relative location claim language quoted above. Second, the two passages from the written description reproduced above were added. Third, Stryker amended Figure 4 to include labels identifying the relative location of the recess and taper and added Figures 23 and 24. The original (on the left) and subsequent (on the right) versions of Figure 4 are reproduced below:

Fourth, Stryker added dependent claims 25 and 32 which explicitly state that the recess is located “essentially midway between the upper and lower ends of the internal securing surface.” '243 Ex Parte Reexamination Certificate at 2:7–9 (claim 25); '243 patent at 18:4–6 (claim 32).

II. Procedural History

On November 4, 2011, Stryker sued Zimmer et al. in the United States District Court for the District of New Jersey for infringing the '243 patent. On May 17, 2012, Stryker served its initial infringement contentions asserting literal infringement of several claims—without asserting infringement under the doctrine of equivalents (“DOE”). However, Stryker also stated:

To the extent that any of the limitations of the asserted claims are not deemed to be literally infringed in the manner set forth in Exhibit A, Stryker contends that they are infringed under the doctrine of equivalents. In the event that a claim limitation is deemed to be missing under a literal infringement analysis (e.g., due to claim construction), Stryker reserves the right to demonstrate the presence of a substantial equivalent of such an element and pursue infringement claims under the doctrine of

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