Deyerle v. Wright Manufacturing Company
| Decision Date | 23 April 1974 |
| Docket Number | No. 73-1754.,73-1754. |
| Parties | William Minor DEYERLE and Orthopedic Equipment Company, Inc., Plaintiffs-Appellees, v. WRIGHT MANUFACTURING COMPANY and Frank O. Wright, Defendants-Appellants. |
| Court | U.S. Court of Appeals — Sixth Circuit |
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Samuel Scrivener, Jr., Washington, D. C., for defendants-appellants; Robert T. Rylee, II, Memphis, Tenn., J. Warren Kinney, Jr., Cincinnati, Ohio, on brief.
Eugene C. Knoblock, South Bend, Ind., for plaintiffs-appellees; James D. Hall, South Bend, Ind., Daniel D. Canale, Memphis, Tenn., on brief.
Before PHILLIPS, Chief Judge, McCREE, Circuit Judge, and CECIL, Senior Circuit Judge.
This litigation involves apparatus used in hip surgery for fixation of fractures.
Dr. William Minor Deyerle is the owner of United States Patent No. 3,002,514. The patented apparatus is described in the claims as "an instrument for use in fixation of fractures in the upper femur." Orthopedic Equipment Co., Inc. (OEC) is the exclusive licensee under the patent.
The complaint in the present case was filed by Dr. Deyerle and OEC for infringement of the patent, for common law trademark infringement and violation of the rights of Dr. Deyerle in his name and reputation and unfair competition in the use of the Deyerle name and patent number in connection with the sale and advertising of certain devices.
The defendants-appellants are Frank O. Wright and Wright Manufacturing Co. (WMC). The defendants challenged the validity of the Deyerle patent, denied infringement and alleged that they had permission to use the Deyerle name and patent number. They also counterclaimed for infringement of United States Patent No. 2,634,743.
The District Court upheld the validity of the Deyerle patent, found that Wright and WMC had willfully and intentionally infringed the Deyerle patent with respect to certain items and awarded treble damages for such infringement. The court also found common-law trademark infringement, unfair competition and violation of the rights of Dr. Deyerle in his name and reputation. The WMC patent was declared invalid.
Deyerle and OEC moved for reconsideration on the patent infringement issue. The District Judge amended his findings on this issue and held that certain of the Wright devices infringed the Deyerle patent pursuant to the doctrine of equivalents. Wright and WMC also were held liable for inducing infringement. Costs and attorneys' fees were assessed against Wright and WMC, who appeal.
On appeal Wright and WMC contend: 1) The Deyerle patent is invalid; 2) they did not willfully infringe the claims; 3) their devices are not the equivalent of the patented device; 4) they had permission to use the Deyerle name and patent number; and 5) the award of attorneys' fees was improper. We affirm the judgment of the District Court except as to findings of direct infringement and infringement found pursuant to the doctrine of equivalents. We reverse those findings and modify the award of attorneys' fees.
The only patent in issue in this appeal is United States Patent No. 3,002,514, issued on October 3, 1961, to Dr. Deyerle on an application filed January 24, 1958, and entitled "Hip Setting Pin."
The invention as set forth in Claims 1 and 10,1 the only claims in issue, relates to a hip fixation device used by orthopedic surgeons to set fractures of the femur in the neck region between the head and shaft of the femur, and fractures in the intertrochanteric region of the femur.
The device comprises a metal plate having a rectangular thick head portion and a leg portion which is attached to the shaft of the femur. These portions have a continuous concave cylindrical surface which conforms to and abuts the lateral cortex of the femur for a substantial longitudinal extent.
The head portion has a substantially central bore which accommodates an elongated fixation nail. The bore extends through the plate at an angle of about 135 degrees to the plate. This angle corresponds to the angular relation between the axes of the femur neck and shaft. The head portion also contains a plurality of holes extending along axes parallel to and spaced substantially symmetrically radially of the bore axis. In one embodiment there are eight holes arranged in a substantially square pattern around the bore. These holes are adapted to receive fixation pins slidably extending therethrough and guided to extend through the neck of the femur and terminate in the proximal cortex of the femur head. The plate, nail and pins coact to provide a massive fixation of the fracture, thereby immobilizing it against shearing and torsion forces while maintaining contact of bone fragments and accommodating bone absorption or healing at the fracture site.
Although the only specific operative embodiments described in the patent relate to a Smith-Peterson nail as the central fixation device, the specification refers to the central nail as a "fixation nail" or a nail of the "Smith-Peterson type or the like." A Smith-Peterson nail is a triflanged nail and is considerably larger than a fixation pin.
Although there were hip fixation means available to surgeons prior to the invention of the Deyerle patent, they essentially lacked fixation adequate to permit the patient to move about or walk with crutches. These devices required immobilization for periods up to six months in length. The Deyerle devices have proved to be so successful that in many instances hip fracture patients are ambulatory within a week. When prior art means were in use, the fixation pins in the devices sometimes would become loose or back out. Oftentimes, this would result in non-union requiring removal of the device and substitution of an artificial hip member.
Many of the prior art devices used either a Smith-Peterson nail, a screw or modifications thereof to provide fixation. These devices relied principally upon the center nail for fixation. Other devices used fixation pins driven into the femur at converging angles or otherwise grouped in the center. Plates also had been used in conjunction with these devices.
While the prior art disclosed the elements of Deyerle's patented combination used individually or in two and three element combinations, there was no prior art device which fixed up to eight fixation pins in the proximal cortex of the head of the femur and maintained them there by a nail plate and a fixation nail. The device maintained the pins and nail parallel and in proper angular relationship in the cortex and avoided any loosening in the distal cortex. Absolute immobilization against shear and torsion forces was achieved, while still allowing for absorption at the fracture site and continued compact compression asserted by the weight and muscles of the body. The possibility of non-union and aseptic necrosis were decreased.
As in all cases of infringement, we begin with the claims (quoted in footnote 1), since they define the invention. Claim 1 is a combination claim wherein the device comprises essentially an elongated fixation nail, a nail plate adapted to hold said nail and a plurality of fixation pins with corresponding guideholes. Claim 10, also a combination claim, relates to a device comprised essentially of a nail plate having a central bore and a plurality of fixation pins with their corresponding guideholes. Both claims set forth additional limitations which are not material for purposes of this appeal.
WMC makes and sells four types of nail plates. Types 738-B and 738-C (the two differ only in length) embody a central bore and eight peripheral holes. Types 738 and 738-A (the two differ only in length) differ from the B and C models only in the absence of a central bore. Instead, these devices have four holes located substantially within the area that would be occupied by the bore.
Since 1968, WMC has made and sold Smith-Peterson fixation nails. WMC has never made fixation pins for use in the Deyerle device, but has purchased them for resale from the Acme Engineering Company, Greensboro, North Carolina. Acme became a subsidiary of WMC in August 1970.
WMC does not assemble the patented combination. It makes and stocks the parts separately and sells them on randomly received orders.
The District Court held Wright and WMC liable for direct infringement for the making and selling of the four types of nail plates and for inducing infringement by the sale of Smith-Peterson nails and Deyerle fixation pins in an order or orders in conjunction with the sale of any of the four nail plates.
It is well settled that a combination patent protects only the operable assembly of the whole and not the manufacture of its parts. Deepsouth Packing Co., Inc. v. Laitram Corp., 406 U.S. 518, 528, 92 S.Ct. 1700, 32 L.Ed.2d 273 (1972). Since WMC does not assemble the patented combination, we reverse the finding of direct infringement for the manufacture and sale of nail plates per se. Id.
Coupled with the finding of infringement was an award of treble damages for the "willful and intentional" manufacture and sale of the nail plates with the central bore. Although not specifically directed to the inducement of infringement through the sale of the pins, nails and plates in combination, this finding necessarily is applicable to this practice. The sale of these nail plates was intimately connected with, and an integral part of, the inducement of infringement. It is implicit in the judgment of the District Court that damages be trebled for the sale of the nail plate with the bore, whether such sale was a direct or inducement infringement.
With respect to the sale of the nail plate with the bore, Wright and WMC made clear on oral argument that they appeal only to the extent that the District Court found the practice to be willful and intentional and awarded treble damages. We conclude that the award of treble damages...
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