Stryker Corp. v. Davol Incorporated

• Decision Date: 12 December 2000
• Citation: 234 F.3d 1252
• Parties: (Fed. Cir. 2000) STRYKER CORPORATION, Plaintiff-Cross Appellant, v. DAVOL INCORPORATED, Defendant-Appellant. 99-1202, -1555 DECIDED:
• Court: U.S. Court of Appeals — Federal Circuit

Page 1252

234 F.3d 1252 (Fed. Cir. 2000)

STRYKER CORPORATION, Plaintiff-Cross Appellant, v. DAVOL INCORPORATED, Defendant-Appellant.

99-1202, -1555

United States Court of Appeals for the Federal Circuit

DECIDED: December 12, 2000

Appealed from: United States District Court for the Western District of Michigan Judge David W. McKeague

[Copyrighted Material Omitted]

Gregory J. Vogler, McAndrews, Held & Malloy, Ltd., of Chicago, Illinois, argued for plaintiff-cross appellant. With him on the brief was Timothy J. Malloy. Of counsel on the brief was Charles E. Ritter, Miller, Canfield, Paddock and Stone, P.L.C. Of counsel were Sharon A. Hwang and Scott P. McBride, McAndrews, Held & Malloy, Ltd.

Peter C. McCabe III, Winston & Strawn, of Chicago, Illinois, argued for defendant-appellant. With him on the brief was Raymond C. Perkins. Of counsel on the brief was Michael J. Sweedler, Darby & Darby, P.C., of New York, New York. Of counsel was Peggy M. Balesteri, Winston & Strawn.

Before MAYER, Chief Judge, NEWMAN and SCHALL, Circuit Judges.

MAYER, Chief Judge.

Davol, Inc. (Davol) appeals the orders of the United States District Court for the Western District of Michigan (1) granting summary judgment that Stryker Corp.'s (Stryker) instruments do not infringe Davol's United States Patent Nos. 5,391,145 ('145 patent) directed to an "irrigation control valve for endoscopic instrument," and 5,586,977 ('977 patent) directed to a "quick disconnect fitting for coupling interchangeable probe tip to laparoscopic instrument," see Stryker Corp. v. Davol, Inc., No. 4:96-CV-191 (W.D. Mich. Mar. 5, 1998); (2) denying Davol's motion for judgment as a matter of law (JMOL) contesting the jury verdict of willful infringement of claims 8, 11, 13, and 14 of Stryker's United States Patent No. 5,484,402 ('402 patent), directed to a "surgical suction irrigator," by Davol's Hydro-Surg and Hydro-Surg Plus devices and denying Davol's motion for a new trial, see id. (May 26, 1999); and (3) awarding enhanced damages and costs to Stryker for pre-verdict infringement, awarding supplemental damages to Stryker for infringement from the date of the jury's verdict to the entry of the permanent injunction, and finding Davol in contempt for continuing infringement of Stryker's patent rights after issuance of the permanent injunction, see id. (Jul. 29, 1999). Stryker cross-appeals the denial of its attorney fees for Davol's pre-verdict infringement. See id. We affirm.

Background

Stryker filed the application that matured into the '402 patent on December 30 1993, and began selling a commercial embodiment of the patented invention, the Stryke-Flow, in 1994. Davol formed a design team in the Spring of 1995 to develop its own battery-powered suction irrigator. It is undisputed that, prior to allowance of the '402 patent, Davol examined and copied the Stryke-Flow, in developing its Hydro-Surg device. After the '402 patent issued on January 16, 1996, Davol sought opinions of counsel regarding possible infringement of the '402 patent by its four-battery Hydro-Surg and eight-battery Hydro-Surg Plus products.

Stryker sued Davol, alleging that its Hydro-Surg and Hydro-Surg Plus devices infringe claims 8, 11, 13, and 14 of the '402 patent. Only claims 8 and 14 are independent claims. The claim limitations at issue read as follows:

8. A surgical irrigation system suitable for endoscopic and other surgical procedures, comprising:

a) a hand held handpiece for supplying irrigation liquid to a surgical site;

b) a self contained pumping unit locatable adjacent a source of irrigation liquid and remote from said handpiece, said pumping unit comprising a housing containing an outlet for irrigation liquid a pumping member for pumping irrigation liquid through said outlet, a motor for driving said pumping member, and electric battery means for energizing said motor;

c) an elongate tube for connecting said pumping outlet to said handpiece for supplying pumped irrigation liquid to said handpiece, said pumping unit housing comprising an open topped cup and a locator coaxially received in the open top of said cup and a cover closing the top of said locator, said locator comprising a generally radially extending deck overlying the open top of the cup and a column coaxially depending from said deck into said cup, said column having a central recess for receiving said motor, said motor having a shaft protruding up through a hole in the deck and facing into a pumping chamber defined between said deck and said cover.

'402 patent, col. 15, ll. 8-32 (subdivisions added).

14. An endoscopic surgical irrigation system, comprising;

a) a handpiece for directing irrigation liquid to a surgical site;

b) a pumping unit locatable remotely from the handpiece and surgical site, an elongate irrigation liquid tube connecting said pumping unit to said handpiece for delivery of pumped irrigation liquid from said pumping unit to said handpiece, said pumping unit comprising a motor, a pumping member connected to said motor for pumping irrigation liquid into said elongate tube and through said elongate tube to said handpiece, means enclosing a pumping chamber occupied by said pumping member and having an outlet connected to said elongate tube, said pumping chamber enclosing means further including an elongate, hollow, generally tubular spike having means for

(1) sealingly inserting into an outlet fitting of an irrigation liquid supply container,

(2) receiving irrigation liquid from said liquid supply container and directing irrigation liquid into said pumping chamber,

(3) fixing said pumping chamber enclosing means to an irrigation liquid supply container,

(4) independently supporting said pumping unit from an irrigation liquid supply container and

(5) gravitationally and substantially instantaneously priming said pumping chamber upon connection to an irrigation liquid supply container.

Id. at col 16, ll. 5-30 (subdivisions and emphasis added).

Davol countered by alleging that Stryker's Stryke-Flow device infringes Davol's '145 patent directed to an "irrigation control valve for endoscopic instrument," and that a Stryker adapter infringes Davol's '977 patent directed to a "quick disconnect fitting for coupling interchangeable probe tip to laparoscopic instrument." The district court granted summary judgment of non-infringement of Davol's '145 patent because the Stryke-Flow did not have the present capability for "simultaneous suction and irrigation." Summary judgment of non-infringement of the '977 patent was similarly granted because the claimed "second groove" was not present, either literally or equivalently, in Stryker's accused adapter.

Davol moved for summary judgment of non-infringement of claims 8, 11, and 13 of the '402 patent and for judgment that claim 14 was invalid as anticipated by the United States Patent No. 5,176,629 (Kullas patent) and Davol's Endo-Flo device. These motions were denied and the case proceeded to trial on infringement of the '402 patent. The jury returned a verdict on November 20, 1998, that Davol had willfully literally infringed the claims of the '402 patent and that the '402 patent was not invalid. On December 2, 1998, the district court entered judgment for a reasonable royalty and prejudgment interest totaling $1,510,647, enhanced damages of 50% of that amount, and costs to Stryker, but denied Stryker's motion for attorney fees. Davol continued to sell the Hydro-Surg and Hydro-Surg Plus devices. Davol's motions for JMOL and for a new trial were denied.

The court entered a permanent injunction against Davol's infringement of the '402 patent on December 23, 1998. Based on Davol's continued willful infringement through sale of the Hydro-Surg and Hydro-Surg Plus between the jury verdict and entry of the permanent injunction, the district court awarded an additional $132,588.40 as a reasonable royalty plus prejudgment interest. The court then doubled those amounts as enhanced damages.

Within one week of the entry of the permanent injunction, Davol began selling a modified version of its Hydro-Surg Plus suction irrigator in which it removed the motor bracket and attached the motor by screws, replaced the spike in the Hydro-Surg Plus with a narrower, smooth spike, added clips to support the pumping unit when attached to an IV pole, and included set-up instructions to use the clips and not rely on the spike for support.

Davol received an oral opinion of counsel, which was later committed to writing on December 15, 1998, advising that the revised Hydro-Surg Plus did not infringe the claims of the '402 patent. The opinion did note, however, that Stryker might assert that the revised Hydro-Surg Plus infringes the claims of the '402 patent under the doctrine of equivalents, that Davol therefore violates any permanent injunction that might be issued by the district court, and that Styker might move to hold Davol in contempt. The opinion stated that it was more likely than not that the district court would consider allegations of infringement by the revised Hydro-Surg Plus in a contempt proceeding. The opinion went on that, while it could not state with certainty that there is no risk whatever, the risk in selling the revised Hydro-Surg irrigator is "well within acceptable limits."

When ordered to show cause why it was not in contempt of the permanent injunction, Davol provided test results to show that there was an unacceptable failure rate if the pump was used without the clips in simulated operating room conditions, and affidavits from a hospital physician and an FDA expert asserting that it would be contrary to the directions and unreasonable to use the revised Hydro-Surg Plus without the clips. Stryker responded with evidence showing that on five occasions hospitals had used the product without attaching the clips and had ignored Davol's instructions. The court found Davol in contempt for selling products insubstantially modified from the...