Petition for Writ of Certiorari — Stryker Corp. v. Acumed LLC (No. 07-304)

i? oD Supreme Court U.S.

ag 07- 304SEP 14 2007

OFFICE OF THE CLERK

IN THE

Supreme Court of the United States

STRYKER CORPORATION, STRYKER SALES CORPORATION,

STRYKER ORTHOPAEDICS and

HOWMEDICA OSTEONICS CORPORATION,

Petitioners,

v.

ACUMED LLC,

Respondent.

On PETITION FOR A WRIT OF CERTIORARI TO THE

UNiTED STATES COURT OF APPEALS

FOR THE FEDERAL CIRCUIT

oe

PETITION FOR A WRIT OF CERTIORARI

Grecory J. VOGLER

Counsel of Record

SHARON A. HWANG

DENNIS H. JASKOVIAK JR.

McAnprews, HELD & MaL_Loy, LTp.

500 West Madison Street

Suite 3400

Chicago, Illinois 60661

(312) 775-8000

Counsel for Petitioners

2iO81! ce]

COUNSEL PRESS

(800) 274-3321 + (800) 359-6859

i

QUESTIONS PRESENTED

1. Whether the public notice function of patents is

vitiated by the Federal Circuit’s panel-specific, unpredictable

practice of choosing between two irreconcilable claim

construction methodologies whereby patent claims are either

(1) construed in accordance with the broadest available

dictionary definition not expressly disavowed by the patent

specification or (2) construed to have a scope commensurate

with the embodiments disclosed in the specification where

no other indications of breadth are affirmatively disclosed

or taught in the specification.

2. Whether this case satisfies the requirements for an

order of grant of certiorari, vacation of judgment, and remand

to the Federal Circuit on the issue of willfulness, in view of

the Federal Circuit’s abolition of the 24 year old standard of

due care for willfulness in Jn re Seagate Technology, LLC,

Misc. Docket No. 830, __ F.3d __, 2007 U.S. App. LEXIS

19768 (Fed. Cir. August 20, 2007) en banc), wherein the

present case was deemed close on the merits by both the

district court and the Federal Circuit, and thus cannot meet

the new “objectively reckless” willfulness standard.

ii

CORPORATE DISCLOSURE STATEMENT

The caption contains the names of all of the parties to

the proceeding below.

Pursuant to this Court’s Rule 29.6, undersigned counsel

state that Petitioner Stryker Corporation is the parent

company of Petitioners Stryker Sales Corporation, Stryker

Orthopaedics and Howmedica Osteonics Corporation.

No publicly held company owns 10% or more of any of the

Stryker Petitioners’ stock.

lil

TABLE OF CONTENTS

QUESTIONS PRESENTED ...........

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CORPORATE DISCLOSURE STATEMENT .....

TABLE OF CONTENTS ......ccceece

TABLE OF APPENDICES ............

TABLE OF CITED AUTHORITIES ............

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JURISDICTIONAL STATEMENT .............

STATUTORY PROVISION INVOLVED

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I. OVERVIEW OF THE CASE

Il. BACKGROUND OF THE CASE

A.

B.

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The Technology at Issue ............

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The District Court Action ...........

The Federal Circuit’s Decision

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Contents

Page

REASONS FOR GRANTING THE PETITION ... 16

I. CRAFTING A CONSISTENT APPROACH

TO CLAIM CONSTRUCTION IS

EXCEPTIONALLY IMPORTANT TO THE

FREER OO EOE. 05 iene odes eerenens 16

fl. THE FEDERAL CIRCUIT’S DICTIONARY

RULE CONFLICTS WITH THIS COURT’S

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Il. THERE [IS EXTENSIVE CONFLICT

BETWEEN PANELS OF THE FEDERAL

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IV. THIS CASE IS A GOOD VEHICLE FOR

RESOLVING THE QUESTION

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TABLE OFAPPENDICES

Page

Appendix A — Opinion Of The United States Court

Of Appeals For The Federal Circuit Decided April

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Appendix B — Order Of The United States Court Of

Appeals For The Federal Circuit Denying Petition

For Rehearing Filed June 5, 2007 ............ 37a

Appendix C — Order Of The United States Court Of

Appeals For The Federal Circuit Filed March 16,

DR ACUS CU ah desu inaees eee eto eee teen 38a

Appendix D — Judgment Of The United States

District Court For The District Of Oregon Dated

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Appendix E — Order On Claim Construction Of The

United States District Court For The District Of

Oregon Dated October 14, 2004 ............. 43a

Appendix F — Order Of The United States District

Court For The District Of Oregon Daled August 8,

Die sis ae ie een eV ebuwesdviwiwanaets 45a

re ae ee ae ear 48a

Appendix H — Opinion And Order Of The United

States District Court For The District Of Oregon

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Appendix I — Opinion And Order Of The United

States District Court For The District Of Oregon

pated September 12, FUG... ww cc cece e eens: 68a

vi

Appendices

Appendix J — Statute Involved ................ 83a

Appendix K — Constitutional Provision Involved .. 85a

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TABLE OF CITED AUTHORITIES

Page

CASES

Aerajet-General Corp. v. Machine Tool Works,

O55 F268 730 OG. Cir. TIFFS) oc cc cc ccccveres 4

Am. Fruit Growers, Inc. v. Brogdex Co.,

pe a ee are rrr 4,20

Athletic Alternatives, Inc. v. Prince Mfg, Inc.,

poh Re Biya hs go Aly | ee 15, 24

Aquatex Indus., Inc. v. Techniche Solutions,

419 F356 1374 (Fed. Cir. 2005) «nce sccccesss 23

Bates v. Coe,

ee ND halves uss Kens eesadae nee 20

Bell Atlantic Network Servs., Inc. v.

Covad Commun. Group, Inc.,

262 F.36 1258 red. Cw. BURT)... ccc cccccoee 23

Bonito Bouts, Inc. v. Thunder Craft Boats, Inc.,

Sere Pee rere 18

Brooks v. Fiske,

eB Ee ee ey eee 3-4, 20

Cardinal Chem. Co. v. Morton Int’l, Inc.,

gS , Sa ee eo ee 22

Carnegie Steel Co. v. Cambria Iron Co.,

kg Ry. Barer aa 4

Viil

Cited Authorities

Page

Comark Communs. Inc. v. Harris Corp.,

1G F326 TRS ea ee es cet ecccesees 5,19

eBay, Inc. v. MercExchange LLC,

520 GAA. TE ee eae eweievccccess 29

Festo Corp. v. Shoketsu Kinzoku Kogyo

Kabushiki Co.,

FIe is TH TAA ead corre cece: 18, 22

Free Motion Fitness, Inc. v. Cybex Int’, Inc.,

423 FSE TORS Cle Ge I hee vec c cece nes passim

Gemstar-TV Guide Int'l, Inc. v. Int’l Trade Comm'n,

383 F.3d 1352 (FOG. Ci. ZR) cece c cece vee passim

Hogg v. Emerson,

OT US. Be Ce Sy oa whee cess 1-2, 19

Housey Pharms., Inc. v. Astrazeneca UK Ltd.,

366 F.3d 1346 (Pred, Cit, ZS) cc eee eee 7, 20, 23

In re Seagate Technology, L.L.C.,

Misc. Docket No. 830, __ F.3d __, 2007 US.

App. LEXIS 19768 (Fed. Cir. August 20, 2007)

oe | eee re. ee a i, 16, 26, 27

Lawrence v. Chater,

RS i ed Oa 26

Markman v. Westview Instr., Inc.,

ee Oe passim

ix

Cited Authorities

Page

McClain v. Ortmayer,

Sook Bo oo) er errr re 17, 21, 24

Mercoid v. Mid-Continent Investment Co.,

ee ME. kh ocecuupevsaesavnnnees 21

Merrill v. Yeomans,

PE OTE 68 Ce vceesccenenvetvincen 17, 21

nCube Corp. v. Seachange Int'l, Inc.,

436 F346 1317 (ed. Cir. SURG). cc cccccwcess 7

Netword L.L.C. v. Centraal Corp.,

242 F.3d 1347 (Fed. Cir. 2001) ......--60505- 23

Nystrom v. Trex Co.,

424 F.3d 1136 (Fed. Cir. 2005) ............. 7, 10, 23

Phillips v. AWH Corp.,

415 F.3d 1303 (Fed. Cir. 2005) (en banc) ...... passim

Precision Instrument Mfg. Cu. v. Automotive

Maintenance Mach. Co..,

5 RS eee ero rer ee er 21

Renishaw PLC v. Marposs Societa’ per Azioni,

158 F.3d 1243 (Fed. Cir. 1998) .............. 23

Rexnord Corp. v. Laitram Corp.,

274 F.30 1356 (Fed. Cir. 2061) . ww ce vc ceeves 6, 23

Safeco Ins. Co. of Am. v. Burr,

Se es ee Ep a tee de ap ea aecuas 27, 28

x

Cited Authorities

Page

Schriber-Schroth Co. v. Cleveland Trust Co.,

ee nk ee eas 20

Scott Paper Co. v. Marcalus Mfg. Co.,

is a Se ws aie othe ber ee 18

Smith v. Snow,

I gle gins ea oe pace eit 15, 24

Smith v. Wade,

i PEE Ss ccteeeebosnsa purr 27

Sorensen v. Int’l Trade Comm’n,

ER ee Fare ts Gs BO vc viwectwccces 11

Texas Digital Sys., Inc. v. Telegenix, Inc.,

306 F360 1193 (Fed. Cir, 2002)... ccc ccnccess passim

Underwater Devices, Inc. v. Morrison-Knudsen Co.,

vive Be itt. Se |.) 27

United States v. Adams,

I eos epee eyes 4,20

Vitronics Corp. v. Conceptronic, Inc.,

90 F.3d 1576 (Fed. Cir. 1996) ...........00-- 6,17

CONSTITUTIONAL PROVISIONS

ee a hn coe sua Wen cee chun decseneet> l

xi

Cited Authorities

Page

STATUTES

CUNY heigld'v beetle vextcae havens saees ]

eT re errors l

| Ee OEP rrr errr reer l

CE a seb 55 veh o00WGed Deeb aN ewe t¥9 26

EE OP OE rer ee ere eee 1,7, 19

a, SE ee eS eee eee |

EY 6S ss cnawh sav Sous Paes esas eae? 27

MISCELLANEOUS

H.R. Rep. No. 312, 97th Cong., Ist Sess. 41 (1981) . 4

DoRLAND’S ILLUSTRATED MEDICAL DICTIONARY

SEED sey kev ederkeees sews biwoes ss 13

MERRIAM- WEBSTER’S COLLEGIATE DICTIONARY,

gg ee. ee 12

Gretchen Ann _ Bender, Uncertainty and

Unpredictability in Patent Litigation: the Time is

Ripe for a Consistent Claim Construction

Methodology, 8 J. INTELL. Prop. L. 175 (2001) ..

Xi

Cited Authorities

Crissa A. Seymour Cook, Phillips v. AWH Corp. and

the Continuing Ambiguity of Patent Claim

Construction Principles, 55 Kan. L. Rev. 225

GPE oc eGi ree ebey car iey sciires eer taedaees

R. HARMON, PATENTS AND THE FEDERAL CIRCUIT

06.2, w. SE CF OR, FOO Dc ccccccesceves

Russell B. Hill, et. al., Ending the Federal Circuit

CrapShoot: Emphasizing Plain Meaning in Patent

Claim Interpretation, 42 1.D.E.A. 1 (2002)

Kimberly A. Moore, Markman Eight Years Later: Is

Claim Construction More Predictable ?, 9 Lewis &

CLARE E.. T SOe CRD cvccrecskstsweseees

Kelley Casey Mullally, Patent Hermeneutics: Form

and Substance in Claim Construction, 59 FLa L.

Se, SR CUES DS ai 6escsdddedawedereareinren

David Potashnik, Phillips vy. AWH: Changing The

Name Of The Game, 39 Akron L. Rev. 863

6: PPT er er rr rer re re

David Sanker, Phillips v. AWH Corp.: No Miracles

in Claim Construction, 21 BERKELEY TECH L.J. 101

| ae ere re Tas a errant

Michael Saunders, A Survey of Post-Phillips Claim

Construction Cases, 22 BerKELEY TECHL.J. 215

Page

17-18

16

< s PEPOPe TEST TET ET Trier eee 9, 10, 22

xill

Cited Authorities

R. Polk Wagner, et. al., /s the Federal Circuit

Succeeding? An Empirical Assessment of Judicial

Performance, 152 U. Pa. L. Rev. 1105 (2004) ..

Hal C. Wegner, The Non-Precedential

Claim Construction Black Hole 15, (unpublished

manuscript, available at http://

www.patenthawk.com/blog_docs/060814_

BlackHoleClaimConstruction_Wegner.pdf.) ....

David J. Wolfsohn, et. al., Phillips v. AWH: The

Federal Circuit’s Missed Opportunity, THE LEGAL

INTELLIGENCER, Sept. 14, 2005 ...............

Stephanie Ann Yonker, Post-Phillips Claim

Construction: Questions Unresolved, 47 1.D.E.A.

ES <6 on ue e reel eNb sew one <vawdes<s

PETITIONS FOR CERTIORARI

Amgen Inc. v. Hoechst Marion Roussel, Inc.

PEE vecdddach ica tserentteteeeden

Memorex Prods., Inc. v. Sandisk Corp. (No. 05-456)

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BE kb Vetewenendetcestwheres oe ce vewens

Page

10

25

25

25

25

|

OPINIONS BELOW

Petitioner Stryker Corporation (“Stryker”) respectfully

submits this petition for a writ of certiorari to review the

judgment of the United States Court of Appeals for the Federal

Circuit, reported at 483 F.3d 800 (Fed. Cir. 2007). App., infra,

at la— 36a. The order denying Stryker’s Petition For Rehearing

and Rehearing En Banc is unreported. Jd. at 37a. The judgment

of the United States District Court for the District of Oregon is

also unreported. Jd. at 41a - 42a.

JURISDICTIONAL STATEMENT

The District Court had jurisdiction over Respondent’s

claims pursuant to 28 U.S.C. §1338(a). The Federal Circuit had

jurisdiction to hear Stryker’s appeal under 28 U.S.C.

§1295(a)(1), and filed its opinion on April 12, 2007. Stryker’s

timely Petition for Rehearing and Rehearing En Banc was denied

on June 5, 2007. This Court has jurisdiction pursuant to

28 U.S.C. §1254(1).

STATUTORY PROVISION INVOLVED

This case involves the interpretation of 35 U.S.C. §112,

pertinent portions of which are set forth at App. 83a-84a.

STATEMENT OF THE CASE

I. OVERVIEW OF THE CASE

The Constitution vests in Congress the authority “to

promote the Progress of Science and useful Arts, by securing

for limited Times to Authors and Inventors the exclusive Right

to their respective Writings and Discoveries.” U.S. ConstiruTion,

art. I, $8, cl. 8. App. 85a. Congress thus enacted patent laws

that grant patentees a limited monopoly consisting of the

exclusive right to make, use, sell, offer to sell, or import the

patented invention, 35 U.S.C. §271 (2007), in exchange for a

full, clear, and concise public disclosure of the invention.

35 U.S.C. §112 (2007). It is fundamental to our patent system

that the public be able to ascertain the extent of patent

monopolies with reasonable certainty. Hogg v. Emerson, 47 U.S.

2

437, 484 (1848) (explaining that patents must be sufficiently

clear “so that the public, while the term continues, may be able

to understand what the patent is, and refrain from its use, unless

licensed.”’) (citations omitted).

This case raises a question of exceptional importance

regarding how the proper scope of patent claims can be

ascertained. Over the past several years, amid heightened fear

of importing limitations from the specification into the claims,

the dictionary has emerged as a popular tool for claim

construction. E.g. Texas Digital Sys., Inc. v. Telegenix, Inc., 308

F.3d 1193, 1205 (Fed. Cir. 2002); Gemstar-TV Guide Int'l, Inc.

v. Int’l Trade Comm'n, 383 F.3d 1352, 1371-1372 (Fed. Cir.

2004); Free Motion Fitness, Inc. v. Cybex Int'l, Inc., 423 F.3d

1343, 1349, 1354 (Fed. Cir. 2005). Under the dictionary

methodology, the broadest available dictionary definition is

presumed to be the “ordinary meaning” of the claim term,

untouched by the patent specification. Texas Digital, 308 F.3d

at 1205. The patent specification serves only as a check to

determine whether any claim scope has been expressly

disavowed by the patentee. /d.

The widespread construction of claim terms in accordance

with their dictionary definitions, often camouflaged by the

Federal Circuit as the “ordinary meaning” or “plain meaning”

of a claim term, has wreaked havoc on the public notice function

of patents by rewarding patentees with claim scope far broader

than what the written description and claims show to be the

actual invention. The patent bar and the judiciary have engaged

in fierce debate concerning whether claims should be construed

by first reviewing the patent specification to determine the

meaning of the claim term in the context of the patent

specification, or whether - as the decision below holds - claims

should be construed by first considering the dictionary definition

or “ordinary meaning” of the disputed claim term and reviewing

the specification only to determine whether claim scope has

been clearly disavowed. E.g., Gretchen Ann Bender, Uncertainty

and Unpredictability in Patent Litigation: the Time is Ripe for

3

a Consistent Claim Construction Methodology, 8 J. INTELL. Prop.

L. 175, 175 (2001) (“Unfortunately, the field of patent

infringement litigation currently lacks the certainty necessary

to efficiently litigate (and resolve) cases.”); Russell B. Hill, et.

al., Ending the Federal Circuit CrapShoot: Emphasizing Plain

Meaning in Patent Claim Interpretation, 42 1.D.E.A. 1, 1 (2002)

(“The tension between these camps [of judges on the Federal

Circuit], which is driven by competing canons of claim

construction, results in uncertainty for litigants and wasted

judicial resources.”); R. Polk Wagner, et. al., /s the Federal

Circuit Succeeding? An Empirical Assessment of Judicial

Performance, 152 U. Pa. L. Rev. 1105, 1176 (2004) (finding

“that there exists a distinct (and enduring) split in the

methodological approach to claim construction at the Federal

Circuit.”). Prior to her appointment to the Federal Circuit, then-

Professor Kimberly A. Moore observed:

With judicial claim construction now nearing its

adolescence...there should be more predictability. The

reversal rate should be going down, not up. The fault,

at this point, undoubtedly lies with the Federal Circuit

itself. The court is not providing sufficient guidance

on claim construction. There have not evolved any clear

canons of claim construction to aid district court judges,

and in fact the Federal Circuit judges seem to disagree

among themselves regarding the tools available for

claim construction.

Markman Eight Years Later: Is Claim Construction More

Predictable?, 9 Lewis & Ciark L. Rev. 231, 246-47 (2005).!

Although this Court has not formally considered the issue

of whether a dictionary definition should trump the meaning

ascertained from the teachings of the patent specification, this

Court’s precedent reveals that claims have historically been

construed in the context of the patent specification. E.g., Brooks

' Judge Moore later provided the dissenting opinion in the present

case.

4

v. Fiske, 56 U.S. 212, 215 (1854) (“The claim, or summing up,

however, is not to be taken alone, but in connection with the

specification and drawings; the whole instrument is to be

construed together.”’); Am. Fruit Growers, Inc. v. Brogdex Co.,

283 U.S. 1, 6 (1931) (“The claim of a patent must always be

explained by and read in connection with the specification.”)

(quoting Carnegie Steel Co. v. Cambria Iron Co., 185 U.S. 403,

432 (1902)); United States v. Adams, 383 U.S. 39, 49 (1966)

(“[I]t is fundamental that claims are to be construed in the light

of the specifications and both are to be read with a view to

ascertaining the invention.”) (citations omitted).

Despite this Court’s historical preference for using the

patent specification as the primary tool for construing claims,

various panels of the Federal Circuit have gradually but

unmistakably diminished the primacy of the patentee’s own

written description as a claim construction tool in favor of out-

of-context, abstract dictionary definitions. As a result, two

distinct, conflicting claim construction methodologies have

emerged, leading to widespread uncertainty as to the proper

interpretation of patent claims. Despite efforts by Congress and

the Judiciary to increase certainty with respect to assessing the

scope of patent claims, confusion over diverging claim

construction precedent has reached a critical level that requires

intervention by this Court.

In 1982, conflicting precedents of regional circuits on patent

law issues led Congress to pass the Federal Courts Improvement

Act. That Act established the Federal Circuit and consolidated

appeals from patent cases in that court with the intention of

decreasing such uncertainty. Aerojet-General Corp. v. Machine

Tool Works, 895 F.2d 736, 744 n.7 (Fed. Cir. 1990) (“[T]he

central purpose [in creating the Federal Circuit] is to reduce the

widespread lack of uniformity and uncertainty of legal doctrine

that existed in the administration of patent law.”’) (quoting H.R.

Rep. No. 312, 97th Cong., Ist Sess. 41 (1981)).

After the Federal Circuit was established, in an effort to

further promote uniformity, this Court held that the interpretation

5

of patent claims was a matter of law for the judge to decide.

Markman v. Westview Instr., Inc., 517 U.S. 370, 372 (1996).

Judges, as compared to juries, the Court explained, are better

equipped to interpret patent claims, and the important statutory

policies of uniformity and certainty would be ill served by having

juries construe documents. /d. at 388-391. Inherent in Markman

was the assumption that district courts and, indeed, the Federal

Circuit, would be guided by consistent claim construction

methodologies that would further the policies of uniformity and

certainty. This Court even referenced a “standard construction

rule that a term can be defined only in a way that comports with

the instrument as a whole.” /d. at 389 (citations omitted).

Unfortunately, far from any sort of “standard construction

rule,” the Federal Circuit has developed competing,

irreconcilable methodologies to support whatever claim

construction a given Federal Circuit panel seeks to justify. On

the one hand, when favoring a broader claim construction, the

Federal Circuit cautions that “limitations from the specification

should not be imported into the claims,” and that claims are not

limited to the disclosed embodiments. Comark Communs. Inc.

v. Harris Corp., 156 F.3d 1182, 1186-87 (1998); Gemstar, 383

F.3d at 1372.

In Texas Digital, the Federal Circuit established a

presumption in favor of the dictionary definition of a claim term,

recommending that relevant dictionaries be examined first in

construing a claim. The presumed meaning according to the

dictionary definition could only be overcome where the patentee

set forth an explicit definition of the claim term different than

its ordinary meaning, or where the inventor clearly disavowed

claim scope. Texas Digital, 308 F.3d at 1204. The Texas Digital

court cautioned that consulting the intrinsic evidence as a

threshold step in claim construction “invites a violation of our

precedent counseling against importing limitations into the

claims.” /d. (citations omitted).

On the other hand, when favoring a narrower claim

construction, the Federal Circuit implores that “claims should

6

be construed in light of the specification, of which they are a

part,” and that patentees should not be permitted to claim beyond

the disclosed invention. See, e.g., Vitronics Corp. v.

Conceptronic, Inc., 90 F.3d 1576, 1582-83 (Fed. Cir. 1996).

Under this approach, the Federal Circuit instructed district courts

that “in interpreting an asserted claim, the court should look

first to the intrinsic evidence of record, i.e., the patent itself,

including the claims, the specification and, if in evidence, the

prosecution history.” /d. at 1582 (citation omitted). In fact, the

Vitronics court stated that “{u]sually [the specification] is

dispositive; it is the single best guide to the meaning of a disputed

term.” /d.

Of course, the Texas Digital and Vitronics methodologies

are mutually exclusive because only one type of evidence can

be referenced first. While the sequence of reviewing evidence

may seem insignificant, a court’s choice of methodologies is

often dispositive of a patent case. This is particularly so in the

common scenario exemplified in the present case where a

specification uses a term in a narrower sense than the broadest

available dictionary definition.

Starting the claim interpretation analysis with the dictionary

rather than starting with the intrinsic evidence leads to different

presumptions regarding the specification. If the dictionary

meaning is broad and is considered first, the specification is

used solely to determine whether the patentee “clearly

disavowed” any claim scope, or where the patentee “clearly set

forth an explicit definition of the term different than its ordinary

meaning.” Language from the specification that is anything less

than an express definition generally is not read into the claim

for fear of importing limitations from the specification into the

claim. If the specification is silent as to the broader definition,

the broader dictionary definition controls. See, e.g., Rexnord

Corp. v. Laitram Corp., 274 F.3d 1336, 1342 (Fed. Cir. 2001);

Gemstar, 383 F.3d at 1371-1372; Free Motion Fitness, 423 F.3d

at 1349. This methodology assumes that a patentee’s failure to

discuss or disclose an embodiment means that the patentee

7

intended to include that embodiment, even though it is equally

likely that the patentee simply never contemplated that

embodiment. See Housey Pharms., Inc. v. Astrazeneca UK Ltd.,

366 F.3d 1348, 1357-58 (Fed. Cir. 2004) (“Claims to an

invention that is not described in the specification are an

anachronism. . . . The claims are part of the specification; their

role is to point out what is covered by the patent, not to broaden

the text.) (Newman, J., dissenting, citation omitted).

By starting its interpretive analysis with the intrinsic

evidence, however, the court will be more likely to understand

the meaning of the claim term in the context of the specification

and will recognize whether a later-reviewed dictionary definition

encompasses more than what the patentee contemplated to be

part of the invention. See, e.g., Nystrom v. Trex Co., 424 F.3d

1136, 1145 (Fed. Cir. 2005) (“[I]t is improper to read the term

to encompass a broader definition [than meaning revealed by

the context of the intrinsic record] simply because it may be

found in a dictionary, treatise, or other extrinsic source.”)

(citations omitted). Cf nCube Corp. v. Seachange Int’l, Inc.,

436 F.3d 1317, 1326, 1328 (Fed. Cir. 2006) (“The majority has

broadened a poorly drafted patent to cover an invention that

was not actually claimed or described in the specification” by

affirming a claim construction that is not disclosed or suggested

in the patent) (Dyk, J., dissenting). This is consistent with the

statutory requirement that the patentee clearly and concisely

describe his invention in the specification and “particularly

point[{] out and distinctly claim[] the subject matter which the

applicant regards as his invention.” 35 U.S.C. §112 42 (2007).

In Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005)

(en banc), the Federai Circuit acknowledged the split in its

precedent and purported to resolve the conflict by reaffirming

the approach of Vitronics while rejecting the presumption of

dictionary-based ordinary meaning identified in Texas Digital.

Phillips, 415 F.3d at 1319-21. In particular, the Federal Circuit

reaffirmed the primacy of the specification in construing claims

and emphatically stated that “‘it is therefore entirely appropriate

8

for a court when conducting claim construction to rely heavily

on the written description for guidance as to the ordinary

meaning of the claims.” Jd. at 1317. The Phillips court

recognized that “if the district court starts with the broad

dictionary definition in every case and fails to fully appreciate

how the specification implicitly limits that definition, the error

will systematically cause the construction of the claim to be

unduly expansive.” /d. at 1321. Despite its many proclamations,

Phillips did not resolve the issue presented in this case. To the

contrary, Phillips both disparaged and praised dictionaries as a

source of ordinary meaning for claim terms, and expressly

permitted their use at any time during claim construction.

Id. at 1324.

On the one hand, the Federal Circuit observed that “[t]he

main problem with elevating the dictionary to such prominence

is that it focuses the inquiry on the abstract meaning of words

rather than on the meaning of claim terms within the context of

the patent.” Jd. at 1321. On the other hand, the Federal Circuit

stated that “we do not intend to preclude the appropriate use of

dictionaries .. . A dictionary definition has the value of being

an unbiased source accessible to the public in advance of

litigation.” /d. at 1322 (citation omitted). The Phillips court

further noted that

there is no magic formula or catechism for conducting

claim construction. Nor is the court barred from

considering any particular sources or required to

analyze sources in any specific sequence, as long as

those sources are not used to contradict claim meaning

that is unambiguous in light of the intrinsic evidence.

Id. As forecasted by Federal Circuit Judge Mayer, this opened

the door for continued confusion and uncertainty regarding the

appropriate use of dictionaries and the specification in claim

construction:

Again today we vainly attempt to establish standards

by which this court will interpret claims. But after

9

proposing no fewer than seven questions, receiving

more than thirty amici curiae briefs, and whipping the

bar into a frenzy of expectation, we say nothing new,

but merely restate what has become the practice over

the last ten years — that we will decide cases according

to whatever mode or method results in the outcome

we desire, or at least allows us a seemingly plausible

way out of the case.

Id. at 1330 (Mayer, J., dissenting). See also David J. Wolfsohn,

et. al., Phillips v. AWH: The Federal Circuit's Missed

Opportunity, THE LEGAL INTELLIGENCER, Sept. 14, 2005, at 8 ( “If

courts and litigants must continue to rely on generic recitations

of the same ‘well-settled’ construction principles, while guidance

on thornier interpretative questions is avoided, there is little

reason to hope that the ad hoc and inconsistent nature of claim

construction will be ameliorated any time soon.”); R. HARMON,

Parents AND THE FeperAL Circurr §6.2, p. 51 (7"" ed., 2006

Supp.) (Phillips “provides precious little by way of guidance

for practitioners and decision makers’’).

The mixed message of Phillips has resulted in a continuation

of the Federal Circuit split over claim construction methodology.

See David Sanker, Phillips v. AWH Corp.: No Miracles in Claim

Construction, 21 BERKELEY TeEcH L.J. 101, 121 (2006) (“[A]s a

case expected to clarify claim construction methodology, Phillips

missed the mark.”); Michael Saunders, A Survey of Post-Phillips

Claim Construction Cases, 22 BerKELEY TecH L.J. 215, 237

(2007) (“a substantial number of litigants will face great

uncertainty in the methodology of claim construction that the

court will employ, as claim construction decisions will still

frequently rely on dictionaries, and often in the more obtuse

form of ‘ordinary meaning.’”); Stephanie Ann Yonker, Post-

Phillips Claim Construction: Questions Unresolved,471.D.E.A.

301, 327 (2007) (“There is an insufficient framework articulated

by the Federal Circuit [in Phillips] to guide the determination

of claim term meaning or the scope of patent exclusivity.”);

Crissa A. Seymour Cook, Phillips v. AWH Corp. and the

10

Continuing Ambiguity of Patent Claim Construction Principles,

55 Kan. L. REv. 225, 226 (2006) (“the Federal Circuit’s Phillips

opinion failed to reconcile its intracircuit split, and...the en banc

court blurred the lines between two competing claim

construction authorities without providing any firm guidance

to the district courts on how a judge should approach claim

construction.”).

Since Phillips, individual panels of the Federal Circuit

continue to disagree on the proper claim construction

methodology, particularly with respect to the significance of

the “ordinary meaning(s)” set forth in dictionaries. Compare,

e.g., Nystrom, 424 F.3d at 1145 with Free Motion Fitness, 423

F.3d at 1349, 1354 and App. 12a-17a. See also Hill, et. al., supra,

at 15-22 (noting “Panel-Specific Federal Circuit

Inconsistencies.”). One study even reported that after

Phillips, there have been more dissenting opinions on claim

construction than ever before in the history of the Federal Circuit.

Hal C. Wegner, The Non-Precedential Claim Construction Black

Hole 15 (“A current study shows that roughly fifty-five (55)

percent of trial court decisions involving claim

constructions contested on appeal involve a de novo, different

interpretation by the Federal Circuit.”) (unpublished manuscript,

available at http://www.patent hawk.com/blog_docs/

0608 14_BlackHoleClaimConstruction_Wegner.pdf.). Reversal

rates tied to claim construction remain at an all time high.

Saunders, supra, at 236 (observing that “Phillips has not reduced

reversal rates” and that “the overall reversal rate in claim

construction cases, excluding summary affirmances, is 53.5%,

slightly up from 47.3% [from a previous study].”).

Panels also disagree on the meaning of Phillips itself. In

the present case, both the majority and the dissent cited to

Phillips for support of contrary positions. Compare, e.g., App.

12a (“[A]lthough the specification often describes very specific

embodiments of the invention, we have repeatedly warned

against confining the claims to those embodiments.”’) (citing

Phillips, 415 F.3d at 1323) with App. 25a (“In accordance with

1]

Phillips, the interpretive inquiry should begin not with a

dictionary definition, but with the patent itself, to ascertain what

an ordinarily skilled artisan reading the patent would understand

the claim term to mean.”) (Moore, J., dissenting). Indeed, the

Federal Circuit’s dictionary analysis post-Phillips is being

disguised under the rubric of interpreting claims in accordance

with their “ordinary and customary meaning.” E.g., Sorensen v.

Int'l Trade Comm'n, 427 F.3d 1375, 1378, 1380-81 (Fed. Cir.

2005); App. 33a (“What, if not the specification, is the majority

using to determine the plain meaning of this term? The district

court based its conclusion regarding the plain meaning of

transverse on Webster ’s Dictionary. . . .”) (Moore, J., dissenting).

While Phillips purported to overrule Texas Digital, the

Federal Circuit’s ambiguous language regarding the appropriate

use and sequence of using dictionaries in claim construction

has left the patent bar in a state of confusion. And Texas Digital-

style, broadening claim construction analyses (disguised as

“ordinary meaning” cases) continue to permeate Federal Circuit

jurisprudence. This Court’s intervention is necessary.

Il, BACKGROUND OF THE CASE

A. The Technology at Issue

This case involves intramedullary nails used to treat

proximal humeral fractures. Intramedullary nails are orthopedic

implants that are inserted into the medullary canal of a fractured

bone to immobilize the fracture. Bone screws are used to secure

bone fragments to the implant and to prevent rotation of the

nail.

The humerus is the bone located between the shoulder and

the elbow joint. Proximal humeral fractures are often found in

patients who have fallen on their arms. In the most common

form of proximal humeral fracture, the shoulder ball breaks off

from the longer part of the bone, sometimes itself breaking into

2 or 3 pieces. The holes through the implant for receiving bone

screws are pre-drilled at specific locations along the length and

circumference of the implant.

12

B. The ‘444 Patent

The patent-in-suit, U.S. Patent No. 5,472,444 (“the ‘444

patent”), addresses a specific type of intramedullary nail for

proximal humeral fractures. The ‘444 patent describes “an

elongated tapered nail or rod with a curved tapered shank that

may be secured within a proximal portion of the humeral shaft,

with a contiguous butt portion of the nail extending proximally

from the shank to provide a solid foundation to which the

humeral head fragments may be secured. The butt portion has

transverse holes oriented at selected angles to receive fasteners

attached to the fragments.” Only one preferred embodiment is

described in the ‘444 patent.

C. The District Court Action

Claim construction, and ultimately liability, turned on the

construction of the claim term “transverse holes,” a limitation

appearing in every asserted claim. Under Stryker’s proposed

construction of “transverse holes” to mean “perpendicular

holes,” there could be no infringement as a matter of law because

the accused products featured angled, non-perpendicular holes.

Acumed construed “transverse holes” to simply mean “holes

across the nail,” arguing that “transverse holes” refer to all holes

across the nail, including perpendicular and non-perpendicular

holes.

The district court construed the disputed claim terms on

October 7, 2004, at a time when claim construction using

dictionary definitions was the norm, in accordance with Texas

Digital. The District Court relied on MERRIAM-WEBSTER’ S

Coueciare Dictionary, 11" Edition (2003) in construing the

disputed claim terms.

According to that dictionary, there are two generally

understood “ordinary meanings” of “transverse”: “acting, lying

or being across: set crosswise” or “made at right angles to the

13

anterior-posterior axis of the body.”? It was undisputed that all

of the drawings and descriptions of the “transverse holes” in

the ‘444 patent were directed to holes at right angles to the

longitudinal axis of the nail, i.e., “perpendicular holes.”

Similarly, there was no evidence that the patentee even

contemplated non-perpendicular holes, which were the subject

of Stryker’s own recently issued patent, U.S. Patent No.

7,247,156. Nevertheless, the District Court construed the claim

term “transverse holes” to simply mean “holes across the butt

portion of the nail,” reasoning that the specification did not

expressly disavow that definition, and therefore the claim term

“transverse” presumptively covered all definitions. App. 25a.

On July 12, 2005, the Federal Circuit decided Phillips. In

that decision, the en banc court expressly rejected the

“dictionary-first” claim construction approach of Texas Digital.

Stryker filed a motion for reconsideration of the claim

construction order on July 22, 2005, noting that the District

Court’s claim construction was based on a “dictionary-first”

approach that did not adequately consider the intrinsic evidence.

The motion for reconsideration was denied on August 8, 2005,

with the district court citing Phillips for the proposition that-

“there is no magic formula or catechism for conducting claim

construction. Nor is the court barred from considering any

particular sources or required to analyze sources in any specific

sequence, as loing as those sources are not used to contradict

claim meaning that is unambiguous in light of the intrinsic

evidence.” App. 46a.

A jury trial was held on September 13-20, 2005. The jury

was instructed to construe the claims in accordance with the

District Court’s claim construction order. The jury was further

instructed on the law of willful infringement based on the then-

existing duty of due care standard. The jury subsequently found

literal and willful infringement. App. 48a-52a. The District Court

? A respected medical dictionary also defined “transverse” as

“placed crosswise; situated at nght angles to the long axis of a part.”

DorLANb’s ILLUSTRATED Mepicat Dictionary 1735 (28" ed. 1994).

14

entered a permanent injunction against Stryker on February 24,

2006. Subsequently, the District Court enhanced damages by

fifty-percent based on the finding of willfulness, but denied

Acumed’s motion for attorney fees based on the closeness of

the case with respect to liability and willfulness. App. 53a-73a.

D. The Federal Circuit’s Decision

Stryker timely appealed the entry of a permanent injunction,

and moved for a stay of injunctive relief pending appeal in the

Federal Circuit. On March 16, 2006, the Federal Circuit granted

Stryker’s motion for a stay of injunctive relief. App. 38a-40a.

On April 12, 2007, the Federal Circuit affirmed the district

court in a split decision. App. 1a-36a. As revealed by the majority

and dissenting opinions, the outcome of this case depends on

the choice of claim construction methodologies.

The majority found that “[t]he plain meaning of Claim |

covers more than the particular embodiment shown in the

figures. While the disclosed embodiment possesses

‘perpendicular’ holes, the claim language covers all ‘transverse’

holes — a word that does not necessarily imply right angles.”?

App. 12a. As in Texas Digital, the majority looked to the

specification for a disavowal of claim scope. App. 14a

(“Nowhere in the specification or prosecution history do the

patentees criticize or distinguish tilted, non-perpendicular

holes.””). The majority simply ignored that a “plain meaning” of

“transverse holes” is “perpendicular holes,” in accordance with

the specification, the Dorland’s Medical Dictionary, as well as

one of the definitions from the district court’s general dictionary.

The majority chose instead to give the patentee the “full scope”

of the broadest dictionary meaning with no regard to the fact

> To add insult to injury, the majority noted that its “de novo review

means that we need not decide whether the logic or subsidiary definitions

used by the district court to reach the correct construction were sound.

Likewise, de novo review makes the atmospherics of the Markman

hearing legally irrelevant here. We review only the district court's

finished product, not its process.” App. 17a, n. 2.

15

that the specification supported only the “perpendicular”

meaning.

In a blistering dissent, Judge Moore opined that, “[w]hen

one properly begins this claim construction inquiry with the

intrinsic evidence, rather than dictionary definitions, it is evident

that the district court’s construction of ‘transverse holes’ is in

error.” App. 24a. Judge Moore criticized the district court’s

conclusion that the claim term should be construed in accordance

with the broader of two dictionary definitions because there is

no express disavowal of claim scope in the specification. App.

25a. In particular, Judge Moore noted: “I see no reason why we

should adopt one, broader, plain meaning of the term ‘transverse’

when there is another plain meaning that is completely consistent

with the intrinsic evidence.”’ App. 33a.

In addition, Judge Moore pointed out that Federal Circuit

precedent counsels that where there are two plain and ordinary

meanings of a term, the public notice function of the claim is

best served by the narrower meaning. App. 34a-35a (Citing

Athletic Alternatives, Inc. v. Prince Mfg, Inc. ,73 F.3d 1573 (Fed.

Cir. 1996)). Judge Moore further recognized that, while the

majority carefully avoided using the word “dictionary” to justify

its broad definition of “transverse,” the majority basically

resurrected Texas Digital by starting with a broad dictionary

definition and using the specification only as a check to

determine whether any clear disclaimer of scope exists. App.

25a, 33a (“This approach was specifically rejected by this court

sitting en banc in Phillips ... What, if not the specification, is

the majority using to determine the plain meaning of this term?”’).

Finally, citing this Court’s decision in Smith v. Snow, 294 U.S.

1, 14 (1935), Judge Moore noted that “[cjonstruing ‘transverse’

to include something other than perpendicular- in spite of the

repeated, narrow usage of that term in the specification- would

provide patent coverage that is broader than what the inventor

actually invented and disclosed in his specification, which

clearly should have been the starting point for claim

construction.” App. 27a.

16

Stryker timely requested a rehearing or a rehearing en banc.

While the Federal Circuit required a response from Acumed, it

ultimately declined to rehear the case. App. 37a.

REASONS FOR GRANTING THE PETITION

Stryker seeks review because: (1) determining the proper

methodology for construing claims is an issue of exceptional

importance to the patent system, particularly in view of the ready

availability of a multiplicity of dictionaries to support a

potentially endless variety of claim definitions; (2) the claim

construction methodology adopted by the Federal Circuit in the

present case and in numerous other cases directly conflicts with

this Court’s precedent; (3) while the en banc Phillips decision

was intended to resolve the Federal Circuit’s conflicting claim

construction methodologies, the Federal Circuit’s refusal to take

a firm position has not solved the intra-circuit split of authority;

and (4) at a minimum, this case meets this Court’s standards

for granting certiorari, vacating, and remanding the issue of

willfulness because the Federal Circuit in In re Seagate

Technology, L.L.C., Misc. Docket No. 830, __ F.3d __, 2007

U.S. App. LEXIS 19768 (Fed. Cir. August 20, 2007) (en banc),

overruled the decades-old, artificially low standard for proving

willful infringement that was applied in this case.

I. CRAFTING A CONSISTENT APPROACH TO

CLAIM CONSTRUCTION IS EXCEPTIONALLY

IMPORTANT TO THE PATENT SYSTEM

“In patent law, there is no more important issue than claim

construction. The fortunes of industry rise and fall on such

rulings.” See David Potashnik, Phillips v. AWH: Changing the

Name of the Game, 39 AKRON L. Rev. 863, 867 (2006). The

public notice aspect of claim construction is essential to the

proper functioning of our patent system. Markman, 517 U.S. at

373 (“It has long been understood that a patent must describe

the exact scope of an invention and its manufacture to secure to

the patentee all which he is entitled, and to apprise the public of

what is still open to them.”). This Court has long recognized

17

that “[t]he object of the patent law in requiring the patentee to

‘particularly point out and distinctly claim the part, improvement

or combination which he claims as his invention or discovery,’

is not only to secure to him all to which he is entitled, but to

apprise the public of what is still open to them.” McClain v.

Ortmayer, 141 U.S. 419, 424 (1891). “The claim is the measure

of [the patentee’s] right to relief, and while the specification

may be referred to limit the claim, it can never be made available

to expand it.” Jd. Indeed, “nothing can be more just and fair,

both to the patentee and the public, than that the former should

understand, and correctly describe, just what he has invented,

and for what he claims a patent.” Merrill v. Yeomans, 94 U.S.

568, 573-74 (1877).

As the Phillips court recognized, but has nevertheless

ignored in subsequent decisions, “‘it is inevitable that the multiple

dictionary definitions for a term will extend beyond the

construction of the patent [that] is confirmed by the avowed

understanding of the patentee. . . . Thus, the use of the dictionary

may extend patent protection beyond what should properly be

afforded by the inventor’s patent.” Phillips, 415 F.3d at 1321-

22. Despite the recognition of many problems with dictionary-

based claim constructions, the en banc Phillips Court held that

judges may “rely on dictionary definitions when construing

claim terms, so long as the dictionary definition does not

contradict any definition found in or ascertained by a reading

of the patent documents.” /d. at 1322-23 (quoting Vitronics, 90

F.3d at 1584, n. 6). In application, this rule has lead to the absurd

proposition that a patentee is entitled to a claim scope

commensurate with the meaning of a claim term in a dictionary,

even if a different but non-contradictory meaning is “ascertained

by a reading of the patent documents.” Under this analysis,

patentees are effectively rewarded for setting forth narrow or

ambiguous patent disclosures with broad patent scope.’ This

* As a result, patentees have an incentive to draft specifications

narrowly and ambiguously. See Kelley Casey Mullally, Patent

(Cont'd)

18

contradicts the quid pro quo that forms the basis of the patent

system, which requires patentees to fully disclose invention in

exchange for a limited monopoly. See Scott Paper Co. v.

Marcalus Mfg. Co., 326 U.S. 249, 255 (1945) (‘the means

adopted by Congress of promoting the progress of science and

the arts is the limited grant of the patent monopoly in return for

the full disclosure of the patented invention and its dedication

to the public on the expiration of the patent.’’) (citations omitted).

A pronouncement by this Court clarifying the proper

interpretation of patent claims would provide sorely needed

guidance to the district courts. See Sanker, supra, at 117 (“The

failure to address this issue and provide guidance to district

courts will perpetuate the high reversal rate of district court

decisions by the Federal Circuit”); Moore, supra, at 231 (noting

growing concern surrounding “the lack of guidance” and

resulting “considerable unpredictability” in claim construction

cases). Moreover, setting forth a uniform claim construction

methodology would enable the public to determine with

reasonable certainty the scope of patent claims before litigation.

Clear notice of patent claims is important because it promotes

innovation, which furthers economic efficiency. Festo Corp. v.

Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 730-31

(2002); Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489

U.S. 141, 151 (1989).

II. THE FEDERAL CIRCUIT’S DICTIONARY RULE

CONFLICTS WITH THIS COURT’S PRECEDENT

Under the guise of giving claim terms their “ordinary

meaning,” the Federal Circuit in the present case, and in scores

(Cont'd)

Hermeneutics: Form and Substance in Claim Construction, 59 Fia. L.

Rev. 333, 374-75 (2007) (explaining that patentees may have incentives

to use vague, ambiguous, or obscure language).

19

of other cases, has adopted broad dictionary definitions that

often change the reasonably ascertainable meaning of claims.

See, e.g., Comark, 156 F.3d at 1187; Gemstar, 383 F.3d at 1371-

72. By granting patentees a broader claim scope than that taught

by the disclosure, patent claims are no longer read “in view of

the specification.” This conflicts with historical practice and

this Court’s precedents regarding the use of the specification in

the construction of patents. Using the specification as a check

on a general dictionary definition minimizes the role of the

specification in understanding the meaning of a claim term and

eviscerates the quid pro quo contemplated by 35 U.S.C. §112

and the Constitution. At a minimum, when a claim term is

susceptible to more than one claim construction, this Court’s

precedent dictates that the construction that best comports with

the intrinsic evidence should be adopted.

This Court has long recognized that a patent, like any legal

document, should be interpreted by looking to the document as

a whole. E.g., Markman, 517 U.S. at 389 (citations omitted).

(“It is a standard construction rule that a [patent] term can be

defined only in a way that comports with instrument as a

whole.”’) (citations omitted). From the very beginning of our

patent system, the written specifications of patents have played

a key role in the interpretation of patent scope. Indeed, claims

were not even statutorily recognized until 1836. /d. at 379.

Before this, judges read the specification in order to ascertain

the scope of the invention. For example, the Court in Hogg v.

Emerson stated:

[When we are called upon to decide the meaning of

the patent included in these letters, it seems our duty

not only to look for aid to the specification as a

specification, which is customary, but as a schedule,

made here an integral portion of the letters themselves,

and going out with them to the world, at first, as a part

and parcel of them, and for this purpose united together

forever as identical.

Hogg, 47 U.S. at 483 (internal citation omitted).

20

When claims were used, they were not interpreted in

isolation, but in the context provided by the specification.

See Brooks, 56 U.S. at 215. Even after claims became statutorily

required in 1870, the specification remained fundamentally

important to the understanding of the scope of the invention.

E.g., Am. Fruit Growers, 283 U.S. at 6 (“The claim of a patent

must always be explained by and read in connection with the

specification.”); Schriber-Schroth Co. v. Cleveland Trust Co.,

311 U.S. 211, 217 (1940) (“The claims of a patent are always to

be read or interpreted in the light of its specifications”); Adams,

383 U.S. at 49 (“[I]t is fundamental that claims are to be

construed in the light of the specifications and both are to be

read with a view to ascertaining the invention.”).

In Bates v. Coe, 98 U.S. 31 (1878), this Court taught that

the claims of the patent, like other provisions in writing,

must be reasonably construed, and in case of doubt or

ambiguity it is proper in all cases to refer back to the

descriptive portions of the specification to aid in

solving the doubt or in ascertaining the true intent and

meaning of the language employed in the claims.

Bates, 98 U.S. at 38. Because patents, like other legal documents,

should be interpreted by looking to the document as a whole,

proposed definitions of a claim term based on evidence outside

of the patent must “fully comport[] with the specification and

claims and so will preserve the patent’s internal coherence. . .”

Markman 517 U.S. at 390.

Some Federal Circuit panels, however, presume that

dictionary definitions “fully comport” with the specification

even where the specification uses the claim term only in a

narrower sense without indicating a broader sense, provided

that the dictionary definition is not expressly rejected or contrary

to the intended meaning. See, e.g., Free Motion Fitness, 423

F.3d at 1348; Gemstar, 383 F.3d at 1371-72 (Fed. Cir. 2004);

Housey, 366 F.3d at 1352. This is precisely what the majority

did in the present case. App. 14a. Under such a presumption,

21

silence is essentially construed as if the patentee had

affirmatively described the broadened subject matter. Such a

result is inconsistent with the quid pro quo concept upon which

our patent system is based, because it is the patentee’s

responsibility to clearly describe and particularly claim its

invention in exchange for the limited monopoly given as part

of the patent grant. See Merrill, 94 U.S. at 573-74 (“it seems to

us that nothing can be more just and fair, both to the patentee

and the public, than that the former should understand, and

correctly describe, just what he has invented, and for what he

claims a patent.”).

The Federal Circuit’s practice of broadening patent claim

scope beyond what the patentee described as his invention is

also directly contrary to the precedents of this Court that hold

that “when the [patent] claim is fairly susceptible of two

constructions, that [construction] will be adopted which will

preserve to the patentee his actual invention. . . .” McClain, 141

U.S. at 425; Smith, 294 U.S. at 14 (same). If there is any

ambiguity pertaining to the interpretation of a claim term, it

should be resolved in a manner that is the most consistent with

the patent specification. After all, this Court recognizes that it

is contrary to public policy to broaden patent claims beyond

what the patentee actually invented. Precision Instrument Mfg.

Co. v. Automotive Maintenance Mach. Co., 324 U.S. 806, 816

(1945) (“The far-reaching social and economic consequences

of a patent .. . give the public a paramount interest in seeing

that patent monopolies... are kept within their legitimate

scope.”); Mercoid v. Mid-Continent Investment Co., 320 U.S.

661, 666 (1944) (“The patent ... is a privilege which is

conditioned by a public purpose. It results from invention and

is limited to the invention which it defines.”).

Giving patentees a presumption of broader claim scope

where no such scope was taught or contemplated unfairly

benefits the patentee at the expense of public notice. Patentees

are already protected against insubstantial changes to their

claimed inventions by the doctrine of equivalents, which is

22

justified by the spirit of the patent laws. See, e.g., Festo, 535

U.S. at 732 (stating that while “[iJt is true that the doctrine of

equivalents renders the scope of patents less certain,” “this

uncertainty [is] the price of ensuring the appropriate incentives

for innovation.”). Multiplying the zone of uncertainty by

permitting expansion of the literal meaning of the chosen claim

terms beyond the meaning ascertained in the context of the

patent, however, is contrary to the spirit and letter of the patent

laws.

Ill. THERE IS EXTENSIVE CONFLICT BETWEEN

PANELS OF THE FEDERAL CIRCUIT

“Because the Federal Circuit has exclusive jurisdiction over

appeals from all United States District Courts in patent

litigation,” the methodologies that it develops and applies

regarding claim construction “is a matter of special importance

to the entire Nation.” Cardinal Chem. Co. v. Morton Int’l, Inc.,

508 U.S. 83, 89 (1993). Since Phillips, the use of varying claim

construction methodologies by individual panels of the Federal

Circuit has become a de facto intra-circuit split, making it

virtually impossible for parties and district courts alike to know

with reasonable certainty whether to stress the dictionary or the

specification when construing a claim. Saunders, supra, at 236-

237 (discussing post-Phillips claim construction methodologies

and explaining that 35.8% of post-Phillips cases still based the

“ordinary meaning” of a claim term on dictionary definitions).

As described above, two distinctly competing lines of precedent

continue to split the Federal Circuit’s claim construction case

law.

One line of cases, including the present case, essentially

clings to the methodology of Texas Digital, which promoted

looking first to the dictionary definition of a claim term for an

“ordinary meaning” of the term, and then examining the patent

and prosecution history only for evidence of a contrary meaning,

e.g., an express definition of the term or a rejection of the

presumed “ordinary meaning.” See, e.g., Free Motion Fitness,

423 F.3d at 1348-49; App, 12a-17a. Under this line of cases, a

23

patentee is entitled to a claim scope commensurate with the

meaning of a claim term in a dictionary, even if a different but

non-contradictory meaning is indicated from a reading of the

patent documents. See, e.g., Gemstar, 383 F.3d at 1371-1372;

Rexnord, 274 F.3d at 1342-43.

The competing line of cases looks first to the specification

and other intrinsic evidence for the patentee’s intended meaning.

Upon finding an intended meaning, the patentee is not rewarded

with a broader dictionary definition absent affirmative support

in the specification. See, e.g., Aquatex Indus., Inc. v. Techniche

Solutions, 419 F.3d 1374, 1380-82 (Fed. Cir. 2005); Nystrom,

424 F.3d at 1144-45. Under this line of cases, a patentee is

entitled to claim scope no broader than the disclosed invention,

even if a different but non-contradictory meaning is found in a

dictionary. See, e.g., Bell Atlantic Network Servs., Inc. v. Covad

Commun. Group, Inc., 262 F.3d 1258, 1273 (Fed. Cir. 2001);

Netword L.L.C. v. Centraal Corp., 242 F.3d 1347, 1352 (Fed.

Cir. 2001); Renishaw PLC v. Marposs Societa’ per Azioni,

158 F.3d 1243, 1249-50 (Fed. Cir. 1998); Housey, 366 F.3d

at 1356-58.

The continuing split, even post- Phillips, is best illustrated

by an examination of Nystrom and Free Motion Fitness. In

Nystrom, the claim term “board” was construed more narrowly

than the dictionary allowed. The Nystrom Court explained that

although some dictionaries define the term “board” as being

broader than “a sawed piece of lumber,” the patentee consistently

used the term ‘board’ throughout the written description to

describe wood decking material cut from a log. Nystrom, 424

F.3d at 1144. The patentee was therefore not entitled to a broader

dictionary definition, which provided that a “board” could also

be a similarly-shaped item made of a rigid material:

What Phillips now counsels is that in the absence of

something in the written description and/or prosecution

history to provide explicit or implicit notice to the

public—i.e., those of ordinary skill in the art-—that the

inventor intended a disputed term to cover more than

24

the ordinary and customary meaning revealed by the

context of the intrinsic record, it is improper to read

the term to encompass a broader definition simply

because it may be found in a dictionary, treatise, or

other extrinsic source.

Id. at 1145.

Only two days later, a different panel took the opposite

approach in Free Motion Fitness. There, the majority construed

the term “adjacent” in accordance with the broader of two

dictionary definitions because that definition was not explicitly

disclaimed. The dissenting judge observed:

The majority’s reasoning appears to start with the

broadest definition and consult the written description

only to see if that definition is narrowed, rather than

determining whether the specification discloses

anything broader than the narrow definition ... The

majority’s approach, in my view, does not attempt to

determine what the inventor actually invented, but

rather takes the broadest available abstract meaning of

a claim term that is not explicitly rejected by the

specification. This approach allows the claim scope to

extend beyond what the inventor’s written description

and claims show to be his actual invention.

Free Motion Fitness, 423 F.3d at 1355 (Prost, J., dissenting).

The present case and Free Motion Fitness also present a

further split with Athletic Alternatives, which counsels that

[w]here there is an equal choice between a broader and

narrower meaning of a claim and there is an enabling

disclosure that indicates that the applicant is at least

entitled to a claim having the narrower meaning, we

consider the notice function of the claim to be best

served by the narrower meaning.

Athletic Alternatives, 73 F.3d at 1581. Cf; McClain, 141 U.S. at

425; Smith, 294 U.S. at 14. In the present case, the Federal

25

Circuit chose the broader meaning, without regard to the public

notice function of the claims.

IV. THIS CASE IS A GOOD VEHICLE FOR

RESOLVING THE QUESTION PRESENTED

If uniformity and public notice are to be realized, it is critical

that this Court establish a coherent set of claim construction

guidelines. Previous petitioners have bypassed this issue, instead

requesting deferential review of district court claim

constructions. E.g., Phillips v AWH Corp. (No. 05-602); Amgen

Inc. v. Hoechst Marion Roussel, Inc. (No. 06-1291); Memorex

Prods., Inc. v. Sandisk Corp. (No. 05-456); Merck & Co. v. Teva

Pharms. USA, Inc. (No. 05-236). This case presents an

opportunity to correct the underlying problem of claim

construction — a lack of guidance as to how to properly construe

a patent claim when faced with the increasingly common

scenario where a broad dictionary definition encompasses scope

not described in the patent.

This case presents an especially good factual and procedural

scenario for addressing the appropriate claim construction

methodology. The technology at issue is relatively

straightforward. The patent discloses only one embodiment.

Each party’s proposed construction of “transverse” is supported

by a dictionary definition: one broad, and one narrower. The

specification expressly supports the narrower definition but is

silent as to the broader definition. Resolution of the first

Question Presented is outcome-determinative.

Procedurally, this case affords a perfect opportunity to

address head-on the Federal Circuit’s claim construction

methodologies. The claim construction proceedings in this case

were conducted in accordance with Texas Digital’s dictionary-

first methodology. Reconsideration of the claim construction

was denied due to the en banc Federal Circuit’s statements based

on Phillips permitting the continued use of dictionaries, despite

overruling Texas Digital. The majority below affirmed the

district court’s claim construction under the auspices of relying

26

on Phillips, while the dissent disagreed with the claim

construction, also citing to Phillips. This Court’s intervention

will help resolve the confusion foisted upon the patent bar by

Phillips and its progeny.

V. A GVR ORDER IS APPROPRIATE IN THIS CASE

At a minimum, Stryker requests that the Court grant a writ

of certiorari and vacate and remand (“GVR”) the case to the

Federal Circuit for review of the willfulness finding and

subsequent enhancement of damages in light of its recent

en banc decision in In re Seagate Technology, LLC, Misc.

Docket No. 830, __ F.3d __, 2007 U.S. App. LEXIS 19768

(Fed. Cir. August 20, 2007) (en banc).

In Lawrence v. Chater, 516 U.S. 163 (1996), this Court

confirmed “both that we have the power to issue a GVR order,

and that such an order is an appropriate exercise of our

discretionary certiorari jurisdiction.” Lawrence, 516 US. at 166.

28 U.S.C. §2106 confers upon this Court a broad power to

“vacate...any judgment, decree or order of a court lawfully

brought before it for review, and may remand the cause and... .

require such further proceedings to be had as may be just under

the circumstances.” /d. In particular,

[where intervening developments, or recent

developments that we have reason to believe the court

below did not fully consider, reveal a reasonable

probability that the decision below rests upon a premise

that the lower court would reject if given the

opportunity for further consideration, and where it

appears that such a redetermination may determine the

ultimate outcome of the litigation, a GVR order is, we

believe, potentially appropriate.

Lawrence, 516 U.S. at 167-168.

This case clearly meets the Court’s GVR standard because

relevant intervening post-appeal precedent has dramatically

changed the standard of proof for willful infringement. This

Court GVR’s in light of a wide range of developments, including

27

Supreme Court decisions, state supreme court decisions, and

the like. Jd. at 166-167. Since the Federal Circuit has exclusive

jurisdiction over patent appeals, an en banc decision changing

substantive patent law is akin to an intervening state supreme

court decision.

The Federal Circuit has long held that where a potential

infringer has actual notice of another’s patent rights, “he has an

affirmative duty to exercise due care to determine whether or

not he is infringing.” Underwater Devices, Inc. v. Morrison-

Knudsen Co., 717 F.2d 1380, 1389 (Fed. Cir. 1983). “Such

affirmative duty includes, inter alia, the duty to seek and obtain

competent legal advice from counsel before the initiation of

any possible infringing activities.” Jd. at 1389-90. Thus,

Underwater shifted the burden to the accused infringer to prove

the reasonableness of its conduct. Once willfulness is found,

courts may enhance damages up to three times the amount.

35:.U.S.C. §284 (2007).

On August 20, 2007, the Federal Circuit issued an en banc

decision abolishing the duty of due care standard. The Federal

Circuit recognized that, contrary to Supreme Court precedent

that defines “willful” as “actions in reckless disregard of the

law,” the duty of care announced in Underwater Devices “sets

a lower threshold for willful infringement that is more akin to

negligence.” Seagate, __ F.3d at __, 2007 U.S. App. LEXIS

19768, at *21.

In particular, Seagate overruled the Federal Circuit’s

longstanding duty of due care standard for willfulness that was

applied in this case, finding that the overruled standard “allows

for punitive damages in a manner inconsistent with Supreme

Court precedent.” Jd. at *22 (citing Safeco Ins. Co. of Am. v.

Burr, 127 S.Ct. 2201, 2208-10 (2007); Smith v. Wade, 461 U.S.

30, 39-49 (1983)). Indeed, the low standard for willfulness

applied in the present case resulted not only in a finding of

willfulness, but also an enhancement of damages.

28

The en banc Federal Circuit held that “proof of willful

infringement permitting enhanced damages requires at least a

showing of objective recklessness.” /d. Under this new standard

of proof, “a patentee must show by clear and convincing

evidence that the infringer acted despite an objectively high

likelihood that its actions constituted infringement of a valid

patent.” Jd. at *22-23. “The state of mind of the accused infringer

is not relevant to this objective inquiry. If this threshold objective

standard is satisfied, the patentee must also demonstrate that

this objectively-defined risk (determined by the record

developed in the infringement proceeding) was either known

or so obvious that it should have been known to the accused

\

infringer.” Id. at *23. \

Judge Gajarsa, in a detailed concurrence, agreed that the

willfulness standard should follow this Court’s analysis in

Safeco. Under Safeco, Judge Gajarsa explained that a finding

of willfulness under the new “objectively reckless” standard

requires a showing, “by clear and convincing evidence, that (1)

[the accused infringer’s] theory of noninfringement/ invalidity

was not only incorrect, but was objectively unreasonable, and

(2) [the accused infringer] ran a risk of infringing substantially

greater than the risk associated with a theory of noninfringement/

invalidity that was merely careless.” Jd. at *60 (Gajarsa, J.,

concurring).

In the present case, the now-defunct “duty of due care”

standard was applied. Even under this lower threshold, the

District Court specifically noted that the case was close on

liability and willfulness. App. 63a. The Federal Circuit’s split

decision on liability and stay of the permanent injunction

evidences the closeness of the liability case. App. 1a-36a; 38a-

40a. Stryker obtained a detailed clearance opinion from patent

counsel before it began selling the accused devices. App. 20a-

21a. Similarly, the prior art relied upon by Stryker in its invalidity

case was later used by a third party, Smith & Nephew LLC, in

its request for reexamination of the patent-in-suit, and has

formed the basis of the rejection of substantially all of the

29

asserted claims in the U.S. Patent Office’s pending

reexamination of the patent-in-suit. These factors alone

demonstrate that a finding of objective recklessness is not

possible in this close case. While ultimately unsuccessful,

Stryker’s noninfringement and invalidity defenses were

objectively reasonable as demonstrated by the statements and

actions of the district court, Federal Circuit, and U.S. Patent

Office. ;

A remand and likely reversal of the willfulness finding

would require a vacatur of the award of enhanced damages.

Moreover, the underlying case is still pending before the district

court on a remand from the Federal Circuit’s vacation of the

permanent injunction in view of this Court’s decision in eBay,

Inc. v. MercExchange LLC, 126 S.Ct. 1837 (2006). Respondent’s

motion for permanent injunction relies heavily on the

“willfulness” of Stryker’s infringement. Respondent

subsequently filed a motion for double damages on Stryker’s

post-verdict sales (made in accordance with the Federal Circuit’s

stay of the injunction and subsequent vacation of the permanent

injunction) based on the underlying willfulness finding. Since

the Federal Circuit now acknowledges that the willfulness

standard applied here conflicts with the higher “recklessness”

standard required by this Court, it would be unfair to allow

Stryker to continue to suffer the consequences from the

unjustified finding of willfulness in this close case. AGVR order

in this close case is appropriate.

30

CONCLUSION

For all of the foregoing reasons, the petition for a writ of

certiorari should be granted.

Respectfully submitted,

Grecory J. VOGLER

Counsel of Record

SHARON A. HWANG

Dennis H. JASKOVIAK Jr.

McAnprews, HELD & MAa.oy, Lrp.

500 West Madison Street

Suite 3400

Chicago, Illinois 60661

(312) 775-8000

Counsel for Petitioners