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Finding That Conical Device Was an Equivalent Did Not Vitiate “Spherically-Shaped” Claim Limitation

05-1311
November 20, 2006

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Last Month at the Federal Circuit - December 2006

Judges: Newman, Linn (author), Prost

[Appealed from: D. Mass., Judge Harrington]

In DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., Nos. 05-1311, -1335 (Fed. Cir. Nov. 20, 2006), the Federal Circuit held that the district court erred in granting SJ of noninfringement of Medtronic Sofamor Danek, Inc.’s (“Medtronic”) Vertex® device. The Federal Circuit further held that the district court correctly found infringement of Medtronic’s MAS device, noninfringement of Medtronic’s bottomloaded screw device, and that Medtronic was not entitled to JMOL on the issues of noninfringement or lost profit damages.

Appellants DePuy Spine, Inc. and Biedermann Motech GmbH (collectively “DuPuy”) are the licensee and assignee, respectively, of U.S. Patent No. 5,207,678 (“the ’678 patent”). The ’678 patent is directed toward screws and receiving members for use in spinal surgeries to stabilize spinal column segments. The ’678 patent disclosed an improvement over the prior art in that it allowed surgeons to rigidly install the screws into the vertebrae in the exact positions necessary for proper alignment. This improvement may be attributed in part to a spherical screw head and a uniform halved receiver member with a spherical cavity that can be used on various sizes of spherical heads.

Claim 1 of the ’678 patent is directed toward a device for stabilizing spinal column segments, and the construction of several of its claim terms were at issue on appeal, including “an inner hollow spherically-shaped portion,” “an opening being provided opposite said bore for inserting said screw,” and “a compression member . . . pressed against the hollow spherically-shaped portion.”

DePuy sued Medtronic for infringement of the ’678 patent based on several of Medtronic’s products, including models assembled through a top opening in the receiver member (the Vertex® and MAS devices), as well as bottom-loaded screw models. The district court held on SJ that the Vertex® model and the bottom-loaded screw models did not infringe literally or under the DOE. A jury, however, found that the MAS model infringed the ’678 patent under the DOE, awarding lost profits and reasonable royalty damages. The district court denied Medtronic’s motions for JMOL on the issues of infringement and lost profits.

On appeal, DePuy challenged the district court’s finding that the bottom-loaded devices and the Vertex® model did not infringe. Medtronic cross-appealed the district court’s construction of the term “compression member” and the denial of its JMOL motions on the MAS devices. The Federal Circuit first considered the Vertex® model and DePuy’s argument that a genuine issue of material fact existed on the questions of both literal infringement and infringement under the DOE. Specifically, DePuy argued that the district court erred in applying both the “all elements” rule and the function-way-result test. Medtronic, in turn, argued that the Vertex® model contains an inner portion that is conically shaped and not spherically shaped. Moreover, Medtronic argued that the Vertex® model lacked the claim limitation requiring that the screw head be “pressed against” a hollow spherically shaped portion, because the screw head of the Vertex® model engages just the edge of the alleged spherically shaped portion and not the entire portion.

The Federal Circuit, in considering the claim terms “spherically-shaped” and “pressed against,” noted that the claim language did not require that the spherically shaped portion must exclude the edge of that portion, nor does it specify how much of the spherically shaped portion must be “pressed against” the screw head. The Court considered subsequent dependent claim language, as well as the specification itself, in concluding that the spherically shaped portion included the entire portion and not just the edge, and the “pressed against” limitation applied if the screw head was pressed against any part of the spherically shaped portion and not just the edge.

The Federal Circuit next considered DePuy’s argument that the Vertex® model met the “spherically-shaped” limitation although the inner space of that model is conical. DePuy submitted picture evidence before the district court that a thin slice of a sphere, such as a basketball, has a profile that appears conical, as in the Vertex® model. The Court, however, concluded that the comparison did not create a genuine issue of material fact, as DePuy was unable to point to any specific region of the Vertex® model that was spherically shaped. Accordingly, the Federal Circuit affirmed the district court’s holding of SJ of noninfringement of the Vertex® model.

The Federal Circuit then turned to the issue of whether the Vertex® model infringed under the DOE. The Court noted that the “all elements” rule, requiring all limitations in a claim to be evaluated, may in certain instances foreclose a need to consider the DOE, as a limitation cannot be read completely out of a claim. The Court emphasized, however, that the DOE is not foreclosed in every situation where a claim element does not literally read on an accused device, as such a rule would swallow the DOE entirely. But in the present case, the Federal Circuit found no evidence that applying the DOE would read out the “spherically-shaped” limitation in the claims, and therefore the Court held that, while there was no evidence of literal infringement, the district court erred in granting SJ on the issue of noninfringement of the Vertex® model under the DOE.

In addressing the bottom-loaded screw models, wherein the district court’s grant of SJ was based on the Medtronic devices’ lack of a “bore” limitation, the Federal Circuit instead turned its attention to the “opening” limitation, an argument advanced by Medtronic but not adopted by the district court. Medtronic argued, and the Federal Circuit agreed, that its bottom-loaded screw models lacked the required opening element. Therefore, the Federal Circuit affirmed the district court’s finding of SJ of noninfringement of the bottom-loaded screw devices.

Regarding Medtronic’s cross appeal of the district court’s denial of JMOL of noninfringement of the MAS model, Medtronic argued that DePuy failed to establish the MAS model met the “pressed against” limitation by failing to establish that the Medtronic device contained an element that would meet the function-way-result test. Medtronic further argued that the jury’s finding of infringement under the DOE vitiated the “spherically-shaped” limitation. The Federal Circuit disagreed with Medtronic. According to the Court, DePuy presented sufficient evidencethat the MAS device possessed a spherically shaped portion or its equivalent and that the MAS device met the “pressed against” limitation. Thus, the Court affirmed the district court’s denial of JMOL on the issue of noninfringement of the MAS device.

Medtronic further argued that the district court erred by failing to construe the “compression member” element of the ’678 patent claims as a means-plusfunction element. Although recognizing that the phrase lacks the term “means,” Medtronic asserted that the patent identified a compression member only in terms of function and no evidence existed that the term had a well understood structural meaning known in the art. The Federal Circuit disagreed with Medtronic, finding that the specification, in addition to dictionary definitions and expert testimony, unmistakenly identified a structure for the compression member. Accordingly, the Federal Circuit affirmed the district court’s construction of “compression member” and subsequent denial of SJ of noninfringement.

Finally, the Federal Circuit considered Medtronic’s argument that the district court erred in denying JMOL on the issue of lost profits. According to Medtronic, DePuy was not an exclusive licensee during the relevant period of time, and therefore DePuy was not entitled to an award of lost profits. Furthermore, Medtronic asserted that assignee Biedermann Motech lacked the ability to meet market demand, and therefore likewise was not entitled to an award of lost profits. The Federal Circuit thus evaluated DePuy’s licensee agreement and found that it unambiguously provided DePuy with an exclusive license. Therefore, the Federal Circuit found there was adequate basis for the jury’s lost profits award and affirmed the district court’s denial of Medtronic’s motion for JMOL.