Wednesday, September 03, 2008

Claim construction of D NJ tossed in Howmedica case

After a lengthy discussion of arguments, the CAFC disposed of an erroneous claim construction by D NJ rather quickly:

As explained above, the plain language of claim 15 makes clear that, whether a
prosthesis is unicondylar or bicondylar, only one condylar element meeting the
geometric limitations of the claim is required to bring that prosthesis within the scope of
the claim. Wright offers no persuasive evidence that the claim should be interpreted
other than by its plain language. Because we conclude that the claim requires only that
one condylar element in a bicondylar prosthesis satisfy the claim limitations, we vacate
the judgment and remand.

On this point, patentee Howmedica won and accused infringer Wright Medical lost.

The error went to a construction by D NJ: First, the court construed the phrase “femoral component including at
least one condylar element” to require, in a bicondylar femoral component, both
condyles to meet the geometric limitations of the claim.

The CAFC observed: The plain language of claim 15 requires only one condylar element. The femoral component must
include “at least one condylar element,” which the district court correctly understood to
mean “one or more.” The claim then requires that “the condylar element” meet the
specified geometric limitations. See ’100 patent col.7 ll.4-5, 6-7, 9.

Once again, the CAFC (indirectly) cited Innova: “It is a ‘bedrock principle’ of patent law that ‘the claims of a patent define the invention to which the patentee is entitled the right to exclude.’” Phillips v. AWH Corp.,
415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (quoting Innova/Pure Water, Inc. v.
Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)).
[This bedrock principle has been
repeated ignored by Quillen and Webster in their erroneous analysis of patent grant rates.]

Wright made several arguments, all of which lost.

Jepson claim argument --> Here we are dealing
with a Jepson claim. The “articulation” requirement of the preamble is a claim limitation.
See Epcon Gas Sys., Inc. v. Bauer Compressors, Inc., 279 F.3d 1022, 1029 (Fed. Cir.
2002). However, it is a separate limitation from the geometric requirements appearing
in the body of the claim. Wright does not assert that the articulation requirement is not
satisfied. In other words, Wright does not argue that a bicondylar prosthesis in which
only one condyle has the required constant-radius geometry does not achieve
articulation throughout the primary range of flexion, which the district court construed as
“-15º of hyperextension to +75º of flexion.”

A failure to achieve purpose argument --> As we have
explained, such an argument is not persuasive:

The court’s task is not to limit claim language to exclude particular devices
because they do not serve a perceived “purpose” of the invention. . . . An
invention may possess a number of advantages or purposes, and there is
no requirement that every claim directed to that invention be limited to
encompass all of them.

E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1370 (Fed. Cir. 2003) (footnote
omitted); see also Kim v. ConAgra Foods, Inc., 465 F.3d 1312, 1319 (Fed. Cir. 2006)
(refusing to limit claim based on “one object of the invention”); Brookhill-Wilk 1, LLC v.
Intuitive Surgical, Inc., 334 F.3d 1294, 1301 (Fed. Cir. 2003). As discussed above, the
invention described by claim 15 serves multiple purposes, including a simplified
configuration for ease of manufacturing, increased reliability of the prosthesis, reduced
stress on the knee, and an increased area of contact between the condylar element and
the bearing member of the tibial component. Wright does not attempt to show that a
prosthesis in which only one condylar element has the recited geometric characteristics
would not achieve any of these objectives.

A no embodiment disclosed argument-->However, we have repeatedly held that the fact that the specification
describes only a single embodiment, standing alone, is insufficient to limit otherwise
broad claim language. See Phillips, 415 F.3d at 1323; Liebel-Flarsheim Co. v. Medrad,
Inc., 358 F.3d 898, 906 (Fed. Cir. 2004); Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d
1313, 1327-28 (Fed. Cir. 2003). This is not a case in which the specification makes
clear that the invention requires two condyles meeting the specified geometry. Compare Ormco Corp. v. Align Tech., Inc., 498 F.3d 1307, 1313-14 (Fed. Cir. 2007) (limiting claims in part based on specification’s identification of the “primary objective” of the invention and its distinction of the invention from the prior art based on that
objective); SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337,
1342-44 (Fed. Cir. 2001) (limiting claims based on language in specification repeatedly
stating that “the invention” required such limitation and that the limitation was applicable
to “all embodiments of the present invention”).

A prosecution history argument --> A letter between a prosecuting attorney and a patent
applicant is not a representation to the patent examiner, and is therefore not part of the
prosecution history. Rather, it is extrinsic evidence, which can be of limited value to
claim construction, “considered in the context of the intrinsic evidence,” if it “can help
educate the court regarding the field of the invention and can help the court determine
what a person of ordinary skill in the art would understand claim terms to mean.”
Phillips, 415 F.3d at 1319. The letter Wright relies on, reporting to the inventor on the
results of an examiner interview, achieves neither of these objectives and is of no value
to the construction of the disputed claim language.

An inventor testimony argument --> The testimony of an inventor “cannot be relied on to change the meaning
of the claims.” Markman v. Westview Instruments, Inc., 52 F.3d 967, 983 (Fed. Cir.
1995) (en banc), aff’d, 517 U.S. 370 (1996); see also Hoechst Celanese Corp. v. BP
Chems. Ltd., 78 F.3d 1575, 1580 (Fed. Cir. 1996) (“Markman requires us to give no
deference to the testimony of the inventor about the meaning of the claims.”). (...)
Whether an inventor’s testimony is consistent with a broader or narrower claim scope, that testimony is still limited by the
fact that an inventor understands the invention but may not understand the claims,
which are typically drafted by the attorney prosecuting the patent application. As we
have explained, “it is not unusual for there to be a significant difference between what
an inventor thinks his patented invention is and what the ultimate scope of the claims is
after allowance by the PTO.”

leading to:

We hold that inventor testimony as to the
inventor’s subjective intent is irrelevant to the issue of claim construction.

A separate part of the case involved New Jersey contract law -->

Construction of a contract is an issue of law that we review without deference. See Intel Corp. v. VIA
Techs., Inc., 319 F.3d 1357, 1361 (Fed. Cir. 2003). We apply state contract law in
interpreting a settlement agreement. See Augustine Med., Inc. v. Progressive
Dynamics, Inc., 194 F.3d 1367, 1370 (Fed. Cir. 1999).

On contract reformation--> When a written contract “fails to express the agreement
because of a mistake of both parties as to the contents or effect of the writing, the court
may at the request of a party reform the writing to express the agreement.”
Restatement (Second) of Contracts § 155 (1981). The purpose of reformation,
therefore, is to correct a mistake that occurred in reducing the parties’ actual, negotiated
agreement to writing. “The mere fact that a mistaken party could have avoided the
mistake by the exercise of reasonable care does not preclude . . . reformation,” unless
that party’s “fault amounts to a failure to act in good faith and in accordance with
reasonable standards of fair dealing.” Id. § 157 & cmt. a. Reformation of a contract
requires clear and convincing evidence of “a mistake common to both parties” that
causes the written instrument not to reflect the real agreement between the parties.
Brodzinsky, 182 A.2d at 153. Moreover, “the mistake must be a material one; it must be
one in the absence of which the party who made it would not have entered into the
compromise.” 28 Richard A. Lord, Williston on Contracts § 70:219 (4th ed. 1990).

On intent-->Here the district court properly relied on the intent of the parties to interpret the
ambiguous language. When a contract provision is ambiguous, New Jersey law permits
reference to extrinsic evidence to determine the intent of the parties. See Halper, 164
F.3d at 841; Krosnowski v. Krosnowski, 126 A.2d 182, 187-88 (N.J. 1956); Atl. N.
Airlines, 96 A.2d at 656. “When it becomes clear that a ‘certain factual result’ was
within the contemplation of the parties, ‘interpretation should be affected by reasonable
and necessary implications, so that the legal effect then given to the instrument will be
such as to attain the intended factual result.’” Krosnowski, 126 A.2d at 188 (citation

The bottom line, Wright lost on this defense-->Thus, we conclude that both parties intended that the reformed release language be limited to matters actually in dispute at the time. Accordingly, the district court
correctly granted summary judgment in favor of Howmedica on Wright’s affirmative
defense based on the release. We therefore reject Wright’s assertion that the defense
is an alternative ground on which to affirm the district court’s judgment.

In passing, the link no longer seems to work. One must use

The CAFC distinguished the Jang case: Unlike Jang v. Boston Scientific Corp., 532 F.3d 1330 (Fed. Cir. 2008),
where we vacated and remanded a stipulated judgment, here the parties have identified
a single claim term as dispositive of the infringement issue, and we are able to
determine why the district court’s construction of that term renders the accused product

Nelson v. Adams is cited in a footnote: This is because the principle of issue preservation “does not demand
the incantation of particular words,” but rather “requires that the lower court be fairly put
on notice as to the substance of the issue.” Nelson v. Adams USA, Inc., 529 U.S. 460,
469 (2000).


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