Karlin Technology, Inc. v. Surgical Dynamics, Inc.

• Citation: 177 F.3d 968,50 USPQ2d 1465
• Decision Date: 16 April 1999
• Docket Number: No. 97-1470,97-1470
• Parties: KARLIN TECHNOLOGY INC. and Sofamor Danek Group, Inc., Defendants-Appellants, v. SURGICAL DYNAMICS, INC., Plaintiff-Appellee.
• Court: United States Courts of Appeals. United States Court of Appeals for the Federal Circuit

Page 968

177 F.3d 968

50 U.S.P.Q.2d 1465

KARLIN TECHNOLOGY INC. and Sofamor Danek Group, Inc., Defendants-Appellants, v. SURGICAL DYNAMICS, INC., Plaintiff-Appellee.

No. 97-1470.

United States Court of Appeals, Federal Circuit.

April 16, 1999.

Donald R. Dunner, Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., of Washington, DC, argued for defendants-appellants. With him on the brief were Thomas H. Jenkins, Dirk D. Thomas, and Jeff E. Schwartz.

Constance S. Huttner, Skadden, Arps, Slate, Meagher & Flom LLP, of New York, NY, argued for plaintiff-appellee. With her on the brief was Paolo A. Ramundo. Of counsel on the brief was John C. Andres, Surgical Dynamics, Inc., of Norwalk, Connecticut.

Before RICH, CLEVENGER, and GAJARSA, Circuit Judges.

RICH, Circuit Judge.

Karlin Technology, Inc. and Sofamor Danek Group, Inc., (collectively, Karlin) appeal from the decision of the United States District Court for the Central District of California, Civil Action No. 95-CV-258, granting a motion for summary judgment of noninfringement of claims 1, 3, and 4 of U.S. Patent No. 5,015,247 (the '247 patent) in favor of Surgical Dynamics, Inc. (SDI). Because the accused device meets each of the properly construed limitations of the asserted claims, we reverse the decision and grant a summary judgment of literal infringement of claims 1, 3, and 4 in favor of Karlin. Because other issues are outstanding, including SDI's motion for a summary judgment that the '247 patent is invalid, we remand the case for further proceedings.

BACKGROUND

Karlin Technology, Inc. is the assignee of the '247 patent, entitled "Threaded Spinal Implant," and Sofamor Danek Group SDI makes and sells the Ray TFC spinal implant, which comprises a hollow cylinder with external threads along, and holes through, the cylindrical surface. SDI sued Karlin for a declaratory judgment of noninfringement and invalidity of the '247 patent. Karlin counterclaimed for a judgment that the '247 patent was not invalid and that the Ray TFC implant infringes claims 1, 3, and 4 of the '247 patent, both literally and under the doctrine of equivalents. The parties filed opposing motions for summary judgment on the issues of claim construction and infringement, and SDI filed a motion for a summary judgment that the '247 patent is invalid.

Inc. is a licensee under that patent. The '247 patent describes spinal implants for stabilizing adjacent spinal vertebrae, and describes the invention generally as comprising a hollow cylinder with external threads along, and holes through, the cylindrical surface. The hollow portion of the implant is intended to be filled with bone or other osteogenic material so that, while the affected vertebrae are initially stabilized by the implants themselves, bone growth through the holes in the implants eventually fuse the vertebrae together.

Claims 1, 3, and 4, which Karlin alleges are infringed by the Ray TFC implant, read as follows (emphasis on the disputed limitation added):

1. A fusion implant comprising a cylindrical member having an outside diameter larger than the space between the two adjacent vertebrae to be fused and a series of threads on the exterior of the cylindrical member for engaging said vertebrae to maintain said implant in place, a plurality of openings in the cylindrical surface of said member, said outside diameter of said cylindrical member being substantially uniform over the entire length of the implant.

3. The implant of claim 1 in which said implant has a hollow portion for receiving autogenous bone for promoting bone ingrowth.

4. The implant of claim 3 in which said implant has a removable cap for covering said hollow portion.

The district court interpreted the "series of threads" limitation in claim 1 to require threads that are "highly specialized in that they are periodically interrupted, such that the tail ends of each of the tabs so formed are blunted and twisted so as to resist accidental unscrewing." The court held that, given this construction, there was no genuine issue of material fact and SDI was entitled to a summary judgment that the Ray TFC spinal implant did not infringe the asserted claims of the '247 patent, either literally or under the doctrine of equivalents. The court did not rule on SDI's motion for a summary judgment of invalidity. Karlin appeals the grant of summary judgment of noninfringement in favor of SDI.

DISCUSSION

Our review of a grant of summary judgment of patent infringement or noninfringement is plenary. See Cole v. Kimberly-Clark Corp., 102 F.3d 524, 528, 41 U.S.P.Q.2d 1001, 1004 (Fed.Cir.1996). We first determine whether "the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law." Unidynamics Corp. v. Automatic Prod. Int'l, Ltd., 157 F.3d 1311, 1316, 48 U.S.P.Q.2d 1099, 1102 (Fed.Cir.1998) (quoting Fed.R.Civ.P. 56(c)). "In determining whether there is a genuine issue of material fact, the evidence must be viewed in the light most favorable to the party opposing the motion, with doubts resolved in favor of the opponent." Chiuminatta Concrete Concepts, Inc. v. Cardinal Indus., Inc., 145 F.3d 1303, 1307, 46 U.S.P.Q.2d 1752, 1755 (Fed.Cir.1998).

"An infringement analysis entails two steps. The first step is determining the meaning and scope of the patent claims asserted to be infringed. The second step is comparing the properly construed claims to the device accused of infringing." Markman v. Westview Instruments, Inc., 52 F.3d 967, 976, 34 U.S.P.Q.2d 1321, 1326 (Fed.Cir.1995) (en banc) (internal citation omitted), aff'd, 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996). In this case, the claim construction issue centers on the phrase "series of threads" contained in claim 1. We first discuss the proper construction of that phrase and then compare the properly construed claims to the accused Ray TFC spinal implant. Because we conclude that the Ray TFC implant literally infringes the asserted claims, we do not consider whether the device infringes under the doctrine of equivalents.

I. Claim Construction

Claim construction is a question of law, which we review de novo. See Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1456, 46 U.S.P.Q.2d 1169, 1174 (Fed.Cir.1998) (en banc). When construing a claim, a court should first look to the intrinsic evidence, i.e., the patent itself, its claims, written description, and, if in evidence, the prosecution history. See Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582, 39 U.S.P.Q.2d 1573, 1576 (Fed.Cir.1996). The court may receive extrinsic evidence to educate itself about the invention and the relevant technology, but the court may not use extrinsic evidence to arrive at a claim construction that is clearly at odds with the construction mandated by the intrinsic evidence. See Key Pharms. v. Hercon Labs. Corp., 161 F.3d 709, 716, 48 U.S.P.Q.2d 1911, 1917 (Fed.Cir.1998).

The district court here construed "series of threads" to be limited to "highly specialized ... periodically interrupted [threads], such that the tail ends of each of the tabs so formed are blunted and twisted so as to resist accidental unscrewing." This was error. As we discuss below, this limitation is properly construed as referring to continuous threading with a plurality of turns, as found on an ordinary screw or bolt.

A. The Claim Language

Claim construction begins with the words of the claim. See Bell Communications Research, Inc. v. Vitalink Communications Corp., 55 F.3d 615, 619-20, 34 U.S.P.Q.2d 1816, 1819 (Fed.Cir.1995). Where "series of threads" has no specialized meaning to persons of skill in the art (as the parties here agree), the ordinary meaning of those words to those skilled in the art controls, unless the evidence indicates that the inventor used them differently. See Quantum Corp. v. Rodime, PLC, 65 F.3d 1577, 1580, 36 U.S.P.Q.2d 1162, 1165 (Fed.Cir.1995).

The relevant definition of "series" is "a number of things or events of the same class coming one after the other in spatial or temporal succession." WEBSTER'S NINTH NEW COLLEGIATE DICTIONARY 1160 (1986). That is what the threads on screws do. "Thread" is defined as a "continuous helical rib, as on a screw or pipe." MCGRAW-HILL DICTIONARY OF SCIENTIFIC AND TECHNICAL TERMS 2024-25 (5th ed.1994) (emphasis added). At the same time, it is common to speak of each turn as "a thread," as when referring to the number of threads per inch. See A. PARRISH, MECHANICAL ENGINEER'S REFERENCE BOOK § 4-2 to 4-63 (11th ed.1973). We therefore conclude that the ordinary meaning of "series of threads" to one of skill in the art, or even according to common knowledge, is continuous threading with a plurality of turns, as found on an ordinary screw or bolt.

B. Claim Differentiation

The doctrine of claim differentiation also supports a construction of "series of threads" that is not limited to the preferred embodiment's highly specialized interrupted threads. This doctrine, which is ultimately based on the common sense notion 8. The implant of claim 1 in which said threads are locking threads.

that different words or phrases used in separate claims are presumed to indicate that the claims have different meanings and scope, see Comark Communications Inc. v. Harris Corp., 156 F.3d 1182, 1187, 48 U.S.P.Q.2d 1001, 1005 (Fed.Cir.1998), normally means that limitations stated in dependent claims are not to be read into the independent claim from which they depend, see Transmatic, Inc. v. Gulton Indus., Inc., 53 F.3d 1270, 1277, 35 U.S.P.Q.2d 1035, 1041 (Fed.Cir.1995). Here, claims 8 and 9, which were included in the original application as dependent on claim 1, recite additional structure related to the threads:

9. The implant of claim 1 in which said threads are interrupted.

While the canon of claim...