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

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## Record

- **Collection:** Supreme Court brief
- **Document type:** Petition for Writ of Certiorari
- **Published:** January 1, 2007

## Text

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.

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TABLE OF CONTENTS

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

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CORPORATE DISCLOSURE STATEMENT .....

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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
FEES 6 neue cane oes eal poe ee scen 18

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

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

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Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386009_1419%3A1. Public record. Not legal advice.