Wednesday, January 26, 2011

Warsaw v. Globus

In a battle between SETH P. WAXMAN of Wilmer Cutler Pickering Hale and
Dorr, LLP for plaintiffs and CONSTANTINE L. TRELA, JR. of Sidley Austin, LLP
for defendants-appellants , the outcome was

In sum, we reverse the judgment as to claim 45 of the
’929 patent and claim 42 of the ’422 patent. We affirm the
judgment as to claims 47 and 74 of the ’929 patent and
claim 48 of the ’422 patent. We remand this case to the
district court to determine if the calculation of damages
must be reevaluated in light of the modification of the

In terms of caselaw, there is but one citation in the

As this court has stated, “we have expressly rejected
the contention that if a patent describes only a single
embodiment, the claims of the patent must be construed
as being limited to that embodiment.” Phillips v. AWH
Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en banc).

Footnote 2 observes:

At closing argument, counsel for Warsaw argued
that claim 45 of the ’929 patent refers “to a capability of
the instrument,” and that the “instrument itself serves as
a guide.” Counsel argued that the “referencing element”
of claim 42 of the ’422 patent “requires some sort of me-
chanical capability to get the rod . . . in the right place.”
While those remarks suggest a narrower construction of
those claims, we cannot substitute counsel’s argument for
the broader construction given by the cto the jury to guide its deliberations.


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