Wright Medical Technology, Inc. v. Osteonics Corp.

• Decision Date: 27 August 1997
• Docket Number: No. 97-1007,97-1007
• Citation: 122 F.3d 1440,43 USPQ2d 1837
• Parties: WRIGHT MEDICAL TECHNOLOGY, INC. and Dow Corning Corp. (formerly Dow Corning Wright Corp.), Plaintiffs-Appellants, v. OSTEONICS CORPORATION, Defendant-Appellee.
• Court: U.S. Court of Appeals — Federal Circuit

Page 1440

122 F.3d 1440

43 U.S.P.Q.2d 1837

WRIGHT MEDICAL TECHNOLOGY, INC. and Dow Corning Corp (formerly Dow Corning Wright Corp.), Plaintiffs-Appellants, v. OSTEONICS CORPORATION, Defendant-Appellee.

No. 97-1007.

United States Court of Appeals Federal Circuit.

Aug. 27, 1997.

Frank P. Porcelli, Fish & Richardson, P.C., of Boston, MA, argued for plaintiffs-appellants. With him on the brief were John M. Skenyon and Mark J. Hebert.

William L. Mentlik, Lerner, David, Littenberg, Krumholz & Mentlik, of Westfield, NJ, argued for defendant-appellee. With him on brief were Roy H. Wepner and Paul H. Kochanski. Of counsel was Keith E. Gilman.

Before NEWMAN, LOURIE, and SCHALL, Circuit Judges.

LOURIE, Circuit Judge.

Wright Medical Technology, Inc. and Dow Corning Corp. (collectively "Wright") appeal from the summary judgment of the United States District Court for the District of Massachusetts that Osteonics Corp. does not infringe U.S. Patent 4,474,177, either literally or under the doctrine of equivalents. See Dow Corning Wright Corp. v. Osteonics Corp., 939 F.Supp 65 (D.Mass.1996). Because the district court did not err in construing two of the limitations of the claims at issue (although it did err in construing a third limitation), we affirm its judgment that Osteonics does not literally infringe the patent. However, the district court erred in concluding that Wright had waived its claim for infringement under the doctrine of equivalents and in failing to provide a legally sufficient analysis to support the grant of summary judgment on that issue. Accordingly, we affirm-in-part, reverse-in-part, and remand for consideration of infringement under the doctrine of equivalents.

BACKGROUND

The '177 patent, which is assigned to Wright Medical Technology, Inc., is directed to methods and instruments for reshaping the distal surface of a human femur (thigh bone) so that an artificial knee may properly be attached to it. To function properly, the artificial knee must be aligned with respect to the central long axis of the femur, which is offset from the vertical axis of the body by the so-called varus/valgus angle. According to the invention, proper alignment of the artificial knee is achieved, at least in part, by inserting a rod into the femur's intramedullary canal and then obtaining an appropriately reshaped distal surface by using a variety of cutting and shaping instruments.

These instruments are designed to fit onto the intramedullary rod's external guide handle, which is a modified cylinder with two parallel, flattened sides and two intact In 1991, Wright ¹ sued Osteonics for patent infringement, alleging that Osteonics' STAT-IM artificial knee surgery device infringed claims 6-8 and 10. Independent claim 6, from which the other asserted claims depend, reads in pertinent part (with emphasis on the disputed claim terms):

rounded sides. All but one of the instruments described in the patent may be locked in place on the guide handle by means of a locking bolt which prevents rotation about the guide handle. The remaining instrument, the so-called "plateau planer," is designed not to be locked in place, but rather to be freely rotated "... about the central long axis of the guide handle and thus rotated about the central long axis of the femur." '177 patent, col. 6, lns. 22-25.

As an article of manufacture, a distal femoral surface shaping guide comprising the combination of

(A) an intramedullary alignment guide comprising (1) an intramedullary rod portion adapted to closely fit in and extend through the narrowest portion of the human femur such that the central long axis of said femur passes through the central long axis of said intramedullary rod portion, (2) a guide handle attached to and set at a preselected angle with respect to said axis of the intramedullary rod portion and being adapted to receive at least one femoral surface modifying instrument in proper alignment with respect to said handle and (3) a means for securing the combination of (1) and (2) in a fixed position in the femur with

(B) at least one femoral surface modifying instrument which is adapted to cooperatively engage such handle and to assume an appropriate fixed relationship with respect to the distal femoral surface and to the central long axis of the femur....

In 1993, the district court conducted a trial limited to the issue of infringement. Although the parties did not dispute how the STAT-IM device worked, they did contest the proper construction of the claims and, in particular, the terms "closely fit in," "extend through," and "in proper alignment." The jury returned general verdicts stating that each of the asserted claims was not infringed literally or under the doctrine of equivalents. Wright appealed from the denial of its motion for a new trial. Relying on the recently-decided Markman v. Westview Instruments, Inc., 52 F.3d 967, 983-84, 34 USPQ2d 1321, 1333 (Fed.Cir.1995) (in banc), aff'd, 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577, 38 USPQ2d 1461 (1996), we held in a non-precedential opinion that the district court abused its discretion in denying the motion for a new trial because it did not construe the claims as a matter of law before submitting the issues of infringement to the jury. See Dow Corning Wright Corp. v. Osteonics Corp., 57 F.3d 1082 (table, text at 1995 WL 250991) (Fed.Cir. Apr. 28, 1995). We therefore vacated the jury verdict and remanded for a new trial.

On remand, the district court adopted all of Osteonics' claim construction arguments and granted Osteonics' motion for summary judgment of no literal infringement. The court also granted Osteonics' motion for summary judgment on Wright's claim for infringement under the doctrine of equivalents, holding that

[t]he doctrine of equivalents ... is not relevant to this case. [Wright] admitted to the Federal Circuit that if Osteonics' claim interpretation were correct, there would be no infringement at all, whether literal or pursuant to the doctrine of equivalents, a fact noted by the Federal Circuit in its remand to this Court. Even without the concession, however, that seems to be an appropriate assessment of the situation at hand. "The doctrine of equivalents is not a license to ignore or 'erase structural and functional limitations of the claim' limitations 'on which the public is entitled to rely in avoiding infringement.' " If Osteonics is No. 91-10962-GAO, slip op. at 9-10 (citations omitted). This appeal followed. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1) (1994).

correct in its claim construction arguments, there is nothing in its system that is the functional equivalent of those claims.

DISCUSSION

We review a district court's grant of summary judgment de novo. Conroy v. Reebok Int'l, Ltd., 14 F.3d 1570, 1575, 29 USPQ2d 1373, 1377 (Fed.Cir.1994). Summary judgment is appropriate when there is no genuine issue as to any material fact and the moving party is entitled to judgment as a matter of law. Fed.R.Civ.P. 56(c); Johnston v. IVAC Corp., 885 F.2d 1574, 1576-77, 12 USPQ2d 1382, 1383 (Fed.Cir.1989). Thus, summary judgment may be granted when no "reasonable jury could return a verdict for the nonmoving party." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 2509, 91 L.Ed.2d 202 (1986). In deciding whether summary judgment was appropriate, we view the evidence in a light most favorable to the party opposing the motion with doubts resolved in favor of the opponent, which in this case is Wright. See Transmatic, Inc. v. Gulton Indus., Inc., 53 F.3d 1270, 1274, 35 USPQ2d 1035, 1038 (Fed.Cir.1995).

Regarding literal infringement, Wright first argues that because the phrase "adapted to closely fit in and extend through the narrowest portion of the human femur" is modified by the phrase "such that the central long axis of said femur passes through the central long axis of said intramedullary rod portion," the "closely fit" and "extend through" limitations are met by any intramedullary rod that meets the functional objective of the invention. See Laitram Corp. v. Cambridge Wire Cloth Co., 863 F.2d 855, 858, 9 USPQ2d 1289, 1292 (Fed.Cir.1988) (describing a phrase beginning with the term "so that" as a "definitional parameter"); Bausch & Lomb, Inc. v. Barnes-Hind/Hydrocurve, Inc., 796 F.2d 443, 450, 230 USPQ 416, 421 (Fed.Cir.1986) ("We hold that smooth means smooth enough to serve the inventor's purpose."). Thus, Wright argues that an infringing rod, provided it is sufficiently co-linear with the central long axis of the femur, need only "engage" (i.e., enter into) the isthmus of the femur. Osteonics responds that the terms "closely fit" and "extend through" mean exactly what they say: an infringing rod must fit tightly into and extend all the way through the isthmus of the femur. We agree with Osteonics regarding the construction of these claim terms.

A determination of infringement requires a two-step analysis. The first step, claim construction, is a question of law which we review de novo. See Markman v. Westview Instruments, Inc., 52 F.3d 967, 979, 983-84, 34 USPQ2d 1321, 1329, 1333 (Fed.Cir.1995) (in banc), aff'd, 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577, 38 USPQ2d 1461 (1996). The proper construction of the claims is based upon the claim language, the written description portion of the specification including any relevant drawings, the prosecution history, and if necessary to aid the court's understanding of the patent, extrinsic evidence. See id. at 979-81, 52 F.3d 967, 34 USPQ2d at 1329-31. Claim terms are given their ordinary and customary meaning in the field of the invention, unless a special definition is clearly stated in the specification. See id. at 980, 52 F.3d 967, 34 USPQ2d at 1330. Thus, "[u]sually, [the specification] is dispositive; it is the single best guide to the meaning of a disputed claim term." Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582, 39 USPQ2d 1573, 1577 (...