Print PDF

Judgment Vacated and Remanded for Claim Construction Consistent with Plain Meaning of “At Least One”

September 02, 2008
Akagi, Tyler M.

Decision icon Decision

Last Month at the Federal Circuit - October 2008

Judges: Dyk (author), Prost (dissenting), Hochberg (District Judge sitting by designation)

[Appealed from: D.N.J., Judge Wigenton]

In Howmedica Osteonics Corp. v. Wright Medical Technology, Inc., No. 07-1363 (Fed. Cir. Sept. 2, 2008), the Federal Circuit vacated the district court’s judgment of noninfringement and remanded for further proceedings, holding that the district court’s claim construction was incorrect. The Federal Circuit also upheld the district court’s finding that the plaintiff had not released its infringement claim as part of an earlier settlement agreement.

Howmedica Osteonics Corporation (“Howmedica”) owns U.S. Patent No. 5,824,100 (“the ’100 patent”). Claim 15 recites a knee prosthesis with a “femoral component including at least one condylar element . . . to accomplish articulation of the knee prosthesis throughout a range of flexion.” Claim 15 further requires the geometrical feature that “the condylar element” exhibit an essentially constant anterior-posterior articular radius.

As a result of four previous infringement suits, Howmedica and Wright Medical Technology, Inc. (“Wright”) had entered into two separate settlement agreements—one that covered a suit in Massachusetts and another that covered three suits in New Jersey. During negotiations of the Massachusetts agreement, Howmedica objected to language in the agreement that released Wright from claims “including, but not limited to, any and all claims and counterclaims that were or could have been asserted by Howmedica.” Slip op. at 5. In response to Howmedica’s objection, the “including, but not limited to, any and all claims and counterclaims” language was stricken and revised to cover only claims “that were or could have been asserted” in the suit. The other agreement, resolving the New Jersey suits, did not strike the “including, but not limited to” language and was never conformed to the language of the Massachusetts agreement.

Less than three months after the parties executed the settlement agreements, Howmedica brought this action against Wright, alleging infringement of the ’100 patent. Wright asserted the affirmative defense of noninfringement and, two years after filing, the affirmative defense that the New Jersey release provision barred Howmedica’s claim. After the parties filed cross-motions for SJ on Wright’s release defense, the district court denied Wright’s motion and granted Howmedica’s motion. After the district court construed the contested claim terms, Howmedica stipulated to a final judgment of noninfringement and timely appealed that judgment.

On appeal, Howmedica challenged the district court’s construction of the term “femoral component including at least one condylar element.” The claims require that the condylar element have a certain geometry, and, in light of the specification, the district court concluded that in a bicondylar prosthesis, both condyles must meet the geometric requirement.

 Although this was a “close case,” the Federal Circuit disagreed with the district court’s construction, finding it contrary to the plain meaning of the claim’s “at least one” language. The Court held that the “articulation” limitation is separate from the geometric requirements in claim 15. The articulation requirement of the claim could be met, the Court held, without requiring both condyles to meet the geometrical limitations.

The Court also rejected Wright’s argument that both condyles had to meet claim 15’s geometric limitations to achieve all of the purposes of the invention as a whole, as recited in the specification of the ’100 patent. As held by the Court, “there is no requirement that every claim directed to that invention be limited to encompass all of them.” Id. at 11 (quoting E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1370 (Fed. Cir. 2003)). Wright failed, according to the Court, to show that a prosthesis in which only one condylar element has the recited geometric characteristics would not achieve any of the objectives.

Furthermore, the Court held that although the specification describes only a single embodiment—wherein both condyles meet the geometric requirements of claim 15—“the fact that the specification describes only a single embodiment, standing alone, is insufficient to limit otherwise broad claim language.” Id. at 12 (citing Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005)). Nothing in the specification supported Wright’s reading of claim 15 to include a unicondylar prosthesis but to exclude a bicondylar prosthesis.

The Court also rejected Wright’s assertion that a letter sent by the attorney prosecuting the ’100 patent to his client required its proposed construction. The Court found the letter was extrinsic evidence that was irrelevant to claim construction. Finally, the Court rejected Wright’s reliance on the testimony of the inventor of the ’100 patent to narrow the scope of the claim. The Court held that “inventor testimony as to the inventor’s subjective intent is irrelevant to the issue of claim construction.” Id. at 15. For all the reasons above, the Court rejected Wright’s arguments, vacating the district court’s judgment of noninfringement and remanding for further proceedings consistent with its opinion.

The Court next reviewed de novo the district court’s grant of SJ on the release provision. Applying New Jersey contract law, the Court found clear and convincing evidence of material mutual mistake, and thus reformed the New Jersey settlement agreement to match the terms of the Massachusetts agreement. After reformation, the Court construed the release language to preserve Howmedica’s claims under the ’100 patent. Accordingly, the Court affirmed the district court’s grant of SJ in favor of Howmedica on Wright’s release defense.

Judge Prost noted in dissent thatshe would have affirmed the district court’s claim  construction. Looking to the context of the claim and the specification, Judge Prost explained that, while the claim language is broader than the disclosure, the specification never indicates that it should be so broad as to encompass a bicondylar prosthesis having only one of the condylar elements with the required geometry and the other condylar element with an unspecified geometry.