857 F.2d 778 (Fed. Cir. 1988), 87-1445, United States v. Telectronics, Inc.

Docket Nº:Appeal Nos. 87-1445, 87-1446.
Citation:857 F.2d 778
Party Name:8 U.S.P.Q.2d 1217 UNITED STATES of America, Plaintiff/Appellant, and Zimmer, Inc., Involuntary Plaintiff/Counterclaim-Defendant, v. TELECTRONICS, INC. and BGS Medical, Inc., Defendants/Counterclaim-Plaintiffs/Cross-Appellants.
Case Date:September 22, 1988
Court:United States Courts of Appeals, Court of Appeals for the Federal Circuit

Page 778

857 F.2d 778 (Fed. Cir. 1988)

8 U.S.P.Q.2d 1217

UNITED STATES of America, Plaintiff/Appellant,


Zimmer, Inc., Involuntary Plaintiff/Counterclaim-Defendant,


TELECTRONICS, INC. and BGS Medical, Inc.,


Appeal Nos. 87-1445, 87-1446.

United States Court of Appeals, Federal Circuit

September 22, 1988

Page 779

John Fargo, Dept. of Justice, Washington, D.C., argued for plaintiff/appellant. Richard K. Willard, Asst. Atty. Gen., Vito J. DiPietro, Director, Commercial Litigation Branch, Dept. of Justice, Washington, D.C., on the brief for plaintiff/appellant.

Michael I. Rackman, Gottlieb, Rackman & Reisman, P.C., New York City, argued for defendants/counterclaim-plaintiffs/cross-appellants. With him on the brief were Barry A. Cooper and Jeffrey M. Kaden. Also on the brief was William C. Nealon, Suffield, Conn., of counsel.

Before NEWMAN, ARCHER and MAYER, Circuit Judges.

ARCHER, Circuit Judge.

The United States of America (government) appeals the judgment of the United States District Court for the District of Colorado in United States v. Telectronics, Inc., 658 F.Supp. 579, 3 USPQ2d 1571 (D.Colo.1987), holding that Telectronics, Inc. and BGS Medical, Inc. (Telectronics) do not infringe U.S. Patent No. 3,842,841 ('841). Telectronics cross-appeals the determinations that the '841 patent is not invalid under 35 U.S.C. Sec. 112 (1982) and that Telectronics is not entitled to attorney fees under 35 U.S.C. Sec. 285 (1982). 1 We reverse the district court's holding that the '841 patent is not infringed by Telectronics. The determinations that the patent is not invalid under section 112 and that Telectronics is not entitled to attorney fees are affirmed.


The '841 patent issued to Carl T. Brighton, et al. and was assigned to the United States. The patent resulted from work under contract between the Office of Naval Research and the University of Pennsylvania, where the inventors were employed. 658 F.Supp. at 581, 3 USPQ2d at 1571. The '841 patent is directed to a bone growth stimulator device for speeding the healing of fractures and other bone defects. The accused devices of Telectronics are marketed under the name OSTEOSTIM and include Model 2000 and earlier models S-12, HS-12 and XM-12. Zimmer, Inc. (Zimmer), a licensee of the government under the '841 patent, also markets a bone growth stimulator which the district court found to be "quite similar to the preferred embodiment of the invention shown in the patent." 658 F.Supp. at 581, 3 USPQ2d at 1571.

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Normally bone fractures heal naturally as a result of the body's own reparative process. Approximately five percent of the time, however, natural healing does not occur and bone grafting is conventionally employed to attempt to stimulate further reparative growth. 658 F.Supp. at 581-82, 3 USPQ2d at 1572.

Bone growth stimulators are particularly useful in the treatment of fractures normally requiring grafting. The success rate is at least as great as with grafting and the procedure results in less discomfort to the patient. 658 F.Supp. at 582, 3 USPQ2d at 1572. Bone growth stimulators expedite the healing of a fracture or bone defect by passing a low level constant direct current to the site of the fracture via a cathode placed internally at the site of the fracture. Id. The placement of the circuit-completing anode is at issue in this case.

The claim of the '841 patent at issue reads:

  1. A system for expediting the healing of bone fractures and bone defects in a living being comprising:

constant current source means for providing a constant value of current despite changes in load;

means for connecting said constant current means to the living being, such connection acting to produce current flow into said fracture or defect,

said connecting means including further means for application internally of said living being at the fracture or defect site,

said constant current being a selected value within a predetermined microampere range so as to promote bone formation at the fracture or bone defect site and avoid fibrous tissue formation in other areas of the living being.

In describing the operation of the patented invention and the accused devices, the district court stated that

[w]hen using the product of either party, the cathode (negative terminal) is placed in the defect site. The Zimmer cathode is made of stainless steel, the material described in the patent. The OSTEOSTIM cathode is made of titanium. The major difference between the products of the parties pertains to the anode (positive terminal). As disclosed in the patent drawing and accompanying description, and as marketed by Zimmer, the anode is placed on the skin of the patient. So is the power pack (current source) itself. The only internal element [in Zimmer] is the cathode--a pin which is inserted through the skin into the defect site. This technique avoids the need for surgery; after several months of treatment, the cathode pin is simply pulled out. The OSTEOSTIM device, on the other hand, is completely implanted, an embodiment which while not shown in the patent drawing is nevertheless described. The power pack and the anode of the OSTEOSTIM are placed in soft tissue near the bone. The original OSTEOSTIM S-12 had a power pack from which two wires extended, the wires terminating respectively at a titanium cathode for placement in the defect site, and a platinum anode for placement in the soft tissue. In all of the later models, including the OSTEOSTIM-2000, the anode wire was omitted. The anode is the case itself--titanium with a patch of platinum.

658 F.Supp. at 582, 3 USPQ2d at 1572.

Because the Telectronics devices have an implanted anode, the district court stated that "the critical question in the case is whether the language of claim 1 (and with it, the dependent claims) is limited to a skin anode." 658 F.Supp. at 583, 3 USPQ at 1573. Telectronics contended before the district court that "an internal anode could not come within the literal language of claim 1 because fibrous tissue formation inevitably results from such an implant." Id. In finding no literal infringement, the district court held with respect to the accused device that

fibrous tissue formation could not be avoided in the dictionary sense of "keep away from" or "stay clear of".

The claim limitation directed to the avoidance of fibrous tissue means what it plainly says. Accordingly, there is no literal infringement because in the context

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of the patent, even minimal fibrous tissue formation is not its avoidance. Id.

The district court also held that the '841 patent was not infringed under the doctrine of equivalents on the basis that the prosecution history established that the patentees, in responding to rejections by the examiner, repeatedly represented that the invention was limited to a surface or skin anode. After examining the prosecution history in detail, the district court stated: "[i]t is clear from the file history that what convinced the Examiner to allow the claims over the prior art was the argument that a skin anode was used in the invention." 658 F.Supp. at 587, 3 USPQ2d at 1576.

On appeal, the government contends that the district court in its literal infringement analysis erred as a matter of law in its claim interpretation. According to the government, the claim limitation read as a whole requires the constant current supply to be controlled in a manner to minimize the amount of fibrous tissue formed. Telectronics counters that the district court properly interpreted the claim phrase "avoid fibrous tissue formation" and the prosecution history to find that the claim is limited to the use of a skin anode.


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