Appendix — Stryker Corp. v. Acumed LLC (No. 07-304)
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APPENDIX A — OPINION OF THE UNITED STATES
COURT OF APPEALS FOR THE FEDERAL CIRCUIT
DECIDED APRIL 12, 2007
UNITED STATES COURT OF APPEALS
FOR THE FEDERAL CIRCUIT
2006-1260, -1437
ACUMED LLC,
Plaintiff-Appellee,
v.
STRYKER CORPORATION, STRYKER SALES
CORPORATION, STRYKER ORTHOPAEDICS, and
HOWMEDICA OSTEONICS CORPORATION,
Defendants- Appellants.
DECIDED: April 12, 2007
Before GAJARSA, LINN, and MOORE, Circuit Judges.
Opinion for the Court filed by Circuit Judge GAJARSA.
Dissenting opinion filed by Circuit Judge MOORE.
GAJARSA, Circuit Judge.
This patent infringement case deals with orthopedic
devices for the treatment of fractures to the upper arm.
Defendants Stryker Corp., Stryker Sales Corp., Stryker
Orthopaedics, and Howmedica Osteonics Corp. (collectively,
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Appendix A
“Stryker’”) appeal from the final judgment of the United States
District Court for the District of Oregon, following a jury
trial, finding Stryker liable to plaintiff Acumed LLC
(“Acumed”) for willful infringement of U.S. Patent No.
5,472,444 (“the °444 patent”). We affirm the district court’s
findings of infringement and willfulness, but vacate the
permanent injunction issued against Stryker and remand for
reconsideration in light of the Supreme Court’s decision in
eBay Inc. v. MercExchange, Mah. 126 S.Ct. 1837, 164
L.Ed.2d 641 (2006).
I. BACKGROUND
A. The Technology and Patent
Acumed is the assignee of the ’444 patent, which is
directed to an orthopedic nail for the treatment of fractures
in the humerus (the upper arm bone which ends in the
shoulder ball at top and the elbow joint at the bottom). In the
most common form of fracture to this bone, the patient falls
on top of his or her arm, breaking the shoulder ball (the
“humeral cortex”) off from the longer part of the bone (the
“humeral shaft’’). Sometimes the humeral cortex itself breaks
into two or three pieces as well. See 444 patent col.1 11.17-
27. Orthopedic surgeons use nails like the one disclosed in
the patent to treat this type of fracture by excavating a hole
through the humeral cortex and down the humeral shaft,
inserting the nail into the hole, then fixing it in place using
bone screws that pass through holes in the nail. This
procedure secures the bone pieces of the cortex to each other
and to the shaft.
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Appendix A
Claim 1 of the ’444 patent contains every limitation
disputed on appeal by the parties. It reads:
An elongated tapered nai! for securing fractures
of the proximal humerus comprising:
an elongated body having a curved shank
configured to occupy an upper portion of the
proximal humeral shaft, and a contiguous butt
portion extending proximally from the shank and
configured to occupy the humeral cortex;
the butt portion being shorter than the shank and
defining a plurality of at least three transverse
holes, each defining a hole axis, with the three
hole axes angularly offset from each other, such
that the holes may receive fasteners attached to
fragments of the humeral cortex.
"444 patent col.5 11.44-50 (disputed terms emphasized).
B. Stryker’s Dealings with Opinion Counsel
On August 28, 2002, Stryker’s German patent attorney,
Edo Graalfs, wrote a letter to his American counterpart,
Raymond W. Augustin, regarding the humeral nail Stryker
was in the process of developing. Graalfs expressed concern
that the Stryker nail might infringe the ’444 patent:
{T]he independent claim | of this U.S. patent has
a relatively brought {sic, “broad”] scope of
protection. . . . | advised that the nail must not be
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Appendix A
provided with a curvature as this is a feature of
independent claim 1. Now it turned out that for
business reasons it would be a requirement to also
use a curved shank. I expressed my doubts .. .
that it could be possible to find a structure not
covered by the mentioned U.S. patent.
Augustin then placed a memorandum to file dated December
13, 2002, in which he echoed Graalfs’ concerns:
[T]he Stryker Trauma humeral nail would have
each and every element of claim | . . . of the ’444
patent. . . . [I]t is our opinion that there is no strong
invalidity argument which could be used against
all the ’444 issued claims based on the prior art
known at this time. ... In conclusion, it is our
opinion that a curved version of the Stryker
Trauma humeral nail .. . should not be marketed
in the United States.
Testimony at trial indicated that the Stryker nail eventually
sold in the United States did not differ in any relevant respect
from the design specifications reviewed by Graalfs and
Augustin in writing these letters.
After his initial memorandum to file, Augustin drafted a
formal opinion of counsel letter and transmitted it to Stryker
on November 19, 2003. This opinion letter was longer and
more detailed than the earlier memo to file. In it, Augustin
concluded—using claim construction arguments basically
identical to those made by Stryker during this litigation—
that the Stryker nail would not infringe any claim of the ’444
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patent either literally or by equivalents. He also expressed a
belief that Claim | of the ’444 patent was invalid due to
anticipation by an earlier Stryker product.'
At trial, Acumed presented evidence tending to show
that Stryker did not seriously rely upon the later opinion letter
from Augustin. For instance, Stryker filed with the FDA its
application for the accused device on August 14, 2003, some
months before Augustin transmitted the favorable opinion
letter. Gregory Plakson, Stryker’s Director of Intellectual
Property, testified at his deposition that he did not understand
portions of the opinion letter and did not ask Augustin
anything about the opinion. Acumed also presented evidence
tending to show copying by Stryker, including that a Stryker
consultant “confiscated” from an operating room a how-to
chart detailing the assembly and insertion of Acumed’s
product.
C. Litigation background
Stryker began to sell its accused humeral nail in the
United States in early 2004. In April 2004, Acumed filed
suit against Stryker in the District of Oregon, alleging
infringement of Claims 1, 3-5, 10, 11, and 14-17 of the ’444
patent. Following a Markman hearing, the district court
construed the disputed terms. It defined “curved shank” as
“a shank that has a bend or deviation from a straight line
without sharp corners or sharp angles” and “transverse holes”
as “holes across the butt portion of the nail.” It also found
that
1. Stryker does not pursue any invalidity arguments in this appeal.
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Appendix A
the term “angularly offset from each other” means
the axes of the three holes are spaced apart from
each other, an angle is formed by the axes of any
two such holes when viewed in two dimensions
from the butt end or from the side, and the axes
are not aligned in a parallel orientation.
Acumed LLC vy. Stryker Corp., No. 04-CV-513-BR (D.Or.
Oct. 14, 2004) (“Order on Claim Construction”). The case
proceeded to jury trial on infringement, willfulness, and
invalidity. The jury found that the asserted claims were valid,
that Stryker’s product literally infringed those claims, and
that Stryker’s infringement was willful. The district court
denied Stryker’s motion for judgment notwithstanding the
verdict and awarded Acumed enhanced damages for willful
infringement, increasing the damages found by the jury by
fifty percent. It permanently enjoined Stryker from selling
the accused device in the United States.
Stryker appeals the jury verdict of infringement and
willfulness and the district court’s grant of injunctive relief.
This court has jurisdiction pursuant to 28 U.S.C.
§ 1295(a)(1).
Il. DISCUSSION
A. Standard of review
A finding of patent infringement requires a two-step
process: first, the court determines the meaning of the
disputed claim terms, then the accused device is compared
to the claims as construed to determine infringement.
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Appendix A
Markman v. Westview Instruments, Inc., 52 F.3d 967, 976
(Fed.Cir.1995), aff'd, 517 U.S. 370, 116 S.Ct. 1384, 134
L.Ed.2d 577 (1996). We review the construction step de novo.
Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1456
_ (Fed.Cir. 1998) (en banc). When reviewing a district court’s
denial of a motion for judgment as a matter of law, we review
the jury’s factfinding on the infringement step for support
by substantial evidence. Jd. at 1454. Whether infringement
is willful is a factual question that must be proven by clear
and convincing evidence. Comark Commc’ns v. Harris Corp.,
156 F.3d 1182, 1190 (Fed.Cir. 1998). To reverse a willfulness
verdict, an infringer must show that there is not “substantial
evidence to support the jury’s finding of willfulness by clear
and convincing evidence.” /d.
B. Claim Construction and Infringement
1. “Curved shank”
The main dispute between the parties on construction
relates to the claim requirement of a “curved shank,”
construed by the district court to mean a shank that “has a
bend or deviation from a straight line without sharp corners
or sharp angles.” Stryker challenges that interpretation,
arguing that the better reading of the term is “a nonangular
continuous bend.”
When construing claims, a court must begin by
“look[ing] to the words of the claims themselves. . . to define
the scope of the patented invention.” Phillips v. AWH Corp.,
415 F.3d 1303, 1312 (Fed.Cir.2005) (en banc) (quoting
Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582
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Appendix A
(Fed.Cir.1996)). The task of comprehending those words is
not always a difficult one. “In some cases, the ordinary
meaning of claim language as understood by a person of skill
in the art may be readily apparent even to lay judges, and
claim construction in such cases involves little more than
the application of the widely accepted meaning of commonly
understood words.” /d. at 1314. “[C]urved,” as it is used in
the °444 patent, is not a “term [] that ha[s] a particular
meaning in a field of art.” Jd. Its ordinary meaning
encompasses “curvature” made up of small discontinuities.
Consider, for instance, an archway made from rectangular
bricks. The bricks are at angles with respect to each other,
but the overall effect is to describe an arc. It would be
unreasonable to say that such an archway is not “curved.” If
the word “curved” is given its ordinary, lay meaning, the
district court’s construction is correct.
Stryker argues that “curved” is implicitly assigned a
different, narrower meaning by virtue of the context in the
written description in which it appears. See id. at 1316
(“[T]he specification may reveal a special definition given
to a claim term by the patentee that differs from the meaning
it would otherwise possess. In such cases, the inventor’s
lexicography governs.”). That argument is based on a
particular manner of implanting the nail disclosed and touted
by the written description. The °444 patent’s Summary of
the Invention section states that “[t]he curved tapered shape
of the present invention permits it to be inserted into a cavity
formed by a broach tool having the same shape as the nail.”
444 patent col.1 1].49-S1. A broach tool is “essentially a
rasp having the same profile as the hole it is intended to
form.” /d. col.3 11.27-28. The patent teaches that broaching
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Appendix A
is advantageous, since, inter alia, it “generally causes less
tissue damage than a rotating drill bit or reamer.” Jd. col.3
11.32-33. However, “[b]roaching is only suitable for certain
shapes of holes and objects”—in particular, it is useful only
for an object that “largely pass[es] through its own envelope.”
Id. col.3 11.37-40. “Objects with angled bends or small radius
curves (relative to the object length) do not pass through
their own envelope on insertion, and are not well suited to
insertion into a broached hole.” Id. col.3 11.45-48.
Stryker’s argument is essentially an assertion that since
the patent says broaching is desirable, the term “curved” must
be construed to cover only embodiments whose curvature
allows them to be inserted into a broached hole, excluding
“angled bends or small radius curves.” That assertion is
flawed: it is an attempt to import a feature from a preferred
embodiment into the claims. See Phillips, 415 F.3d at 1323
(“{A]lthough the specification often describes very specific
embodiments of the invention, we have repeatedly warned
against confining the claims to those embodiments.”). Neither
use with a broaching tool nor suitability for such use is
claimed. Indeed, the application which led to the ’444 patent
originally included claims to the method of implanting the
nail with a broaching tool, but the patentee elected to
withdraw those claims from the application after the
Examiner noted they were directed to a separate, distinct
invention.
The fact that usability with a broaching tool is merely a
feature of a preferred embodiment provides sufficient
grounds for refusing to read “curved” narrowly. We also note,
though, that the patent’s Claim 13 (not asserted by Acumed
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Appendix A
in this case) covers “[{t]he nail of claim 1 having a profile
that substantially passes within its own envelope.”
444 patent col.6 11.26-27. “[T]he presence of a dependent
claim that adds a particular limitation raises a presumption
that the limitation in question is not found in the independent
claim.” Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898,
910 (Fed.Cir.2004); see also Wengner Mfg., Inc. v. Coating
Mach. Sys., Inc., 239 F.3d 1225, 1234 (Fed.Cir.2001);
Comark, 156 F.3d at 1187; Tandon Corp. v. U.S. Int’l Trade
Comm'n, 831 F.2d 1017, 1023 (Fed.Cir.1987). “That
presumption is especially strong when the limitation in
dispute is the only meaningful difference between an
independent and dependent claim, and one party is urging
that the limitation in the dependent claim should be read into
the independent claim.” SunRace Roots Enter. Co. v. SRAM
Corp., 336 F.3d 1298, 1303 (Fed.Cir.2003); see also Ecolab
Inc. v. Paraclipse, Inc., 285 F.3d 1362, 1375-76 (Fed.Cir.
2002); Wegner Mfg., 239 F.3d at 1233 (“Claim differentiation
.. .18 clearly applicable when there is a dispute over whether
a limitation found in a dependent claim should be read into
an independent claim, and that limitation is the only
meaningful difference between the two claims.”). If we were
to give “curved” in Claim | the meaning which Stryker
advances, Claim 1 would cover only nails that “substantially
pass [] within [their] own envelope[s].” Such a restrictive
reading would render Claims | and 13 identical in scope.
Since independent claims are presumed to have broader scope
than their dependents, the presumption is that Claim 1] should
not be limited in the manner Stryker urges. For the reasons
discussed above, that presumption has not been rebutted.
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Appendix A
Stryker also argues that the district court’s exclusion of
“sharp corners or sharp angles” renders the construction
insufficiently definite, since the court did not specify
precisely how “sharp” is too sharp. However, a sound claim
construction need not always purge every shred of ambiguity.
The resolution of some line-drawing problems—especially
easy ones like this one—is properly left to the trier of fact.
See PPG Indus. v. Guardian Indus. Corp., 156 F.3d 1351,
1355 (Fed.Cir. 1998) (“[A]fter the court has defined the claim
with whatever specificity and precision is warranted by the
language of the claim and the evidence bearing on the proper
construction, the task of determining whether the construed
claim reads on the accused product is for the finder of fact.”);
Modine Mfg. Co. v. U.S. Int’l Trade Comm’n, 75 F.3d 1545,
1554 (Fed.Cir.1996) (whether claim limitation requiring
diameter of “about 0.040 inch” embodied held a matter of
“technologic fact”); see also Abbott Labs. v. Baxter Pharm.
Prods., Inc., 471 F.3d 1363, 1368 (Fed.Cir.2006) (where
result is the same under any reasonable construction, “we
need not construe [the disputed] phrase with numerical
exactitude.”). Here, the accused product has a rounded-off
six-degree angle in its shaft. A reasonable jury could have
found that in the context of this sort of nail, a rounded bend
of six degrees was not a “sharp angle.” The jury’s conclusion
is bolstered by the testimony of Stryker’s own technical
expert, who noted in reference to the Stryker nail that “there’s
no sharp angle there.” There may be some area of imprecision
within the district court’s “without sharp angles”
construction, but this accused product is in no danger of
falling within that area. The construction is correct, and the
jury’s finding that the Stryker nail possesses a “curved shank”
is supported by substantial evidence.
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Appendix A
2. “Transverse holes”
The district court defined “transverse holes” as “holes
across the butt portion of the nail.” Stryker argues that this
claim term should be limited to holes that are perpendicular
to the nail shaft, excluding from the claim scope holes that
are tilted so that one end of the hole is vertically offset from
the other end. Again, this argument is an improper attempt
to read a feature of the preferred embodiment into the claims
as a limitation.
Stryker’s argument for a narrow reading of “transverse”
stems from the fact that “[e] very description of the transverse
holes in the ’444 patent contemplates a perpendicular hole.”
This is a correct characterization of the patent: every figure
which illustrates the holes shows them going perpendicularly
through the shaft, and the written description characterizes
the holes in Figure 2 as “perpendicular to the portion of the
nail axis at the butt portion 14 of the nail.” ’444 patent col.2
11.58-59. However, Figure 2 and the text characterizing it
simply discloses a single, preferred embodiment of the
invention. “[A]lthough the specification often describes very
specific embodiments of the invention, we have repeatedly
warned against confining the claims to those embodiments.”
Phillips, 415 F.3d at 1323; see also Comark, 156 F.3d at
1186-87.
The 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 al! “transverse” holes—a word that
does not necessarily imply right angles. Moreover, the
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Appendix A
patentees’ description of their preferred embodiment itself
implies a difference between the words “perpendicular” and
“transverse.” The written description states that Figure 2
“illustrates a plurality of transverse holes, each of which is
... perpendicular to the portion of the nail axis at the
butt portion 14 of the nail.” ’444 patent col.2 11.56-59.
This implies that a “transverse” hole need not be
“perpendicular”—if it were, the patentee would not have
needed to clarify that these holes, in addition to being
transverse, were perpendicular to the nail axis. Just as in
Phillips, where the asserted claim mentioned “steel baffles”
and hence “strongly implie[d] that the term ‘baffles’ does
not inherently mean objects made of steel,” 415 F.3d at 1314,
this usage of language is strong evidence that the patentee
considered “transverse” and “perpendicular” to have
distinctly different meanings.
The intrinsic evidence of the specification therefore
suggests that the patentees knew how to restrict their claim
coverage to holes passing through at right angles. They could
have used the word “perpendicular,” as they did in discussing
their preferred embodiment. Instead, they chose a different
term that implies a broader scope. The intrinsic evidence does
not indicate that one of skill in the art would believe the
patentees meant “perpendicular” when they said “transverse.”
There is very little indication that the patentees considered
perpendicularlity important to their invention. The patentees
tout the virtue of their preferred hole orientation only once,
noting that “(the predictability of fracture modes makes the
orientation of holes in the illustrated embodiment suitable
in most cases.” 444 patent col.4 11.65-67 (emphasis added).
Far from demonstrating that “the patentee[s] .. . intend[ed]
l4a
Appendix A
for the claims and the embodiments in the specification to
be strictly coextensive” with respect to this limitation,
Phillips, 415 F.3d at 1323, this statement admits that the
disclosed perpendicular hole orientation may not always be
ideal. See ’444 patent col.5 11.2-4 (suggesting that, if holes
are not “ideally situated, the surgeon may slightly rotate the
nail to achieve a more favorable alignment”). Nowhere in
the specification or the prosecution history do the patentees
criticize or distinguish tilted, non-perpendicular holes.
The dissent states that the specification language which
discloses only perpendicular holes should be determinative
of the claim scope. In particular, it points to three instances
in the written description where “transverse holes” are
described as “perpendicular.” Dissent at 812-13 (citing 444
patent col. 2 11.57-59; col.3 11.1-3; col.3 11.9-11). All three of
these instances appear in a textual description of the patent’s
Figure 2, indicating that the holes depicted in that figure are
perpendicular to the nail axis. Thus, while the dissent
emphasizes the fact that there are three references to
“perpendicular” holes in the specification, its argument is
ultimately premised on characteristics which the patentee has
attributed to a single preferred embodiment. In the context
of this patent, such an argument must be contradicted by “our
repeated statements that limitations from the specification
are not to be read into the claims.” Comark, 156 F.3d at 1186;
see also id. at 1187 (“[T]he language that [the defendant]
argues should limit claim 1 is clearly found in the. . . patent’s
description of the preferred embodiment. It is precisely
against this type of claim construction that our prior case
law counsels.”’).
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Appendix A
By highlighting the specification phrase “each of which
is defined” and by describing that phrase as “important{ J,”
Dissent at 814, the dissent appears to suggest that the patentee
has in some sense imposed a limiting definition upon the
word “transverse.” But the use of the word “defined” here
does not imply a lexicographic definition, especially not a
definition of “transverse” to mean “perpendicular.” Instead,
the statement that the holes of the cited embodiment are
“defined on. . . an axis” merely introduces the useful abstract
concept of a “hole axis,” later employed in the claims to
describe the orientation of the holes with respect to each
other. See ’444 patent, Claim 1, col.5 11.53-54 (“the three
hole axes [are] angularly offset from each other .. .”). The
claims repeatedly echo this form of usage of the word
“define.” See, e.g., 444 patent Claim 1, col.5 11.51-55 (“the
butt portion. . . defining a plurality of at least three transverse
holes, each defining a hole axis” (emphasis added)); Claim
2, col.5 11.57-58 (“the curved shank includes a curved portion
defining acurved central axis”); Claim 3, col.5 11.60-61 (“the
butt portion defines a central axis”). If the word “define”
were always to be an important signifier of limitation, this
claim language would indicate that the butt portion has been
defined to be transverse holes, that those holes in turn have
been defined as hole axes, and that the curved portion and
butt portion—physical parts of the nail—have each been
dubbed identical to an imaginary central axis. These
interpretations are incorrect, but they are the natural
consequence of finding a restrictive definition of a term
anywhere the word “define” might appear in this patent,
regardless of context. The specification does not define
“transverse” and “perpendicular” to be coequal in meaning.
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The fact that the term “transverse” has a broader scope
than “perpendicular” also distinguishes this case from
Nystrom v. TREX Co., 424 F.3d 1136 (Fed.Cir.2005), relied
upon by the dissent. See Dissent at 814-15. In Nystrom, “both
parties acknowledge[d] the ordinary meaning of ‘board’ as
‘a piece of sawed lumber,” ” but the patentee sought to have
that claim term “broaden[ed] ... to encompass relatively
obscure definitions that are not supported by the written
description or prosecution history.” Jd. at 1145. We refused
to impose a construction broader than the term’s ordinary
meaning. /d. at 1145-46. Here, on the contrary, we decline to
impose a construction narrower than the term’s ordinary
meaning.
The dissent cites to other patents whose usage of
“transverse” arguably supports its conclusion. Dissent at 815-
16. One of them, U.S. Patent No. 5,697,934, is purely
extrinsic evidence and therefore merits little consideration.
See Phillips, 415 F.3d at 1317. The other, U.S. Patent No.
4,475,545, is cited by the ’444 patent and is part of the
intrinsic record. However, it was not “created by the patentee
in attempting to explain and obtain the patent.” /d. Its usage
is not that of this patentee, and so it also merits less weight
than the evidence of the paientee’s own words. While these
patents merit some consideration, the specification and
claims of the ’444 patent itself should be given significantly
greater weight. /d. (noting that prosecution evidence “‘is less
useful for claim construction purposes”).
A proper reading of the intrinsic evidence indicates that
where the patentees discussed the perpendicular holes of their
preferred embodiment, they were not narrowly defining the
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Appendix A
term “transverse” or otherwise limiting the claims, but merely
discharging their statutory duties “to teach and enable those
of skill in the art to make and use the invention and to provide
a best mode for doing so.” Phillips, 415 F.3d at 1323. That
preferred embodiment cannot be the only product covered
by the claims; if it were, the claims themselves would be
unnecessary. The district court’s construction of “transverse
holes” is correct.’
2. Observing that the district court defined “holes” as “openings
through the buit portion of the nail” and “transverse” as “being across
or set crosswise,” the dissent argues that these two definitions imply
that “transverse holes” has been construed to mean “openings through
across the butt portion of the nail.” Dissent at 815. If the district court’s
definitions of those two words are so concatenated, that is indeed the
result. We of course do not propound such a construction. Neither did
the district court: after defining “transverse” and “holes,” it defined the
phrase “transverse holes” as “holes across the butt portion of the nail.”
Order on Claim Construction at 804. The construction of the disputed
phrase as a whole is correct, and that construction is what we affirm
today. Our de novo review means that we need not decide whether the
logic or subsidiary definitions used by the district court to reach the
correct construciiun were sound. Likewise, de novo review makes the
atmospherics of the Markman hearing, see Dissent at 812-13, legally
irrelevant here. We review only the district court’s finished product, not
its process. Furthermore, the dissent’s criticism of that process contends
that Phillips prohibited the district court from beginning its interpretive
inquiry by consulting a dictionary. Dissent at 813 (“In accordance with
Phillips, the interpretative inquiry should begin not with a dictionary
definition. . . .”). Although in Phillips we rejected an approach in which
a broad dictionary definition is adopted and then wuittled down only if
contradicted by the specification, 415 F.3d at 1321, we did not prohibit
the use of dictionaries in claim construction, nor did we define at what
point in the claim construction analysis they may be consulted.
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3. “Angularly offset”
As noted above, the district court interpreted the claim
requirement that the hole axes be “angularly offset” to mean
that “the axes of the three holes are spaced apart from each
other, an angle is formed by the axes of any two such holes
when viewed in two dimensions from the butt end or from
the side, and the axes are not aligned in a parallel orientation.”
Neither party challenges this definition on appeal, but Stryker
argues that its accused product does not fall within the
definition.
Stryker’s argument is geometrical in nature. A “hole axis”
under the district court’s definition is the imaginary line that
passes through the center of one of the transverse holes.
Stryker correctly points out that the axes thus defined by the
accused product form “skew lines” which are neither parallel
nor intersecting in three-dimensional space. Since those lines
neither form angles nor run parallel with each other, Stryker
suggests that its product falls outside the district court’s
definition. However, this argument ignores an essential part
of that definition, which states that “an angle is formed...
when [the hole axes are] viewed in two dimensions.” The
district court’s meaning here is clear: the hole axes need not
actually intersect. It suffices that the axes appear to intersect
in two dimensions. As an example, if the hole axes are
sketched on a piece of paper (a two-dimensional view of the
nail) and the lines of that drawing intersect, the product drawn
meets the district court’s definition of “angularly offset.” it
is totally clear that the hole axes of Stryker’s product intersect
when drawn on paper, a point well illustrated by Stryker’s
own diagram in support of its argument on this point:
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Appendix A
This diagram, which represents the accused product,
shows intersecting hole axes when viewed in two dimensions.
The jury’s finding that Stryker’s product embodies the
“angularly offset” claim limitation is therefore supported by
substantial evidence.
4. Conclusion
Since the district court’s claim construction is correct
and there is substantial evidence to support the jury’s finding
that Stryker’s product embodies each claim limitation at
issue, the judgment of infringement is affirmed.
C. Willful Infringement
The jury found Stryker’s infringement to be willful,
despite the fact that Stryker admitted into evidence the
November 19, 2003 opinion letter from Augustin which
concluded that Stryker’s product would not infringe.
Favorable opinions of counsel normally present a well-
grounded defense to willfulness, but the protection
they afford is not absolute. “Those cases where willful
20a
Appendix A
infringement is found despite the presence of an opinion of
counsel generally involve situations where opinion of counsel
was either ignored or found to be incompetent.” Read Corp.
v. Portec, Inc., 970 F.2d 816, 828-29 (Fed.Cir. 1992).
Willfulness is “not an all-or-nothing trait, but one of
degree.” Comark, 156 F.3d at 1182 (quoting Rite-Hite Corp.
v. Kelley Co., 819 F.2d 1120, 1125-26 (Fed.Cir.1987)).
Whether an infringer ignored the opinion of its counsel is,
as part of the willfulness inquiry, also a question of degree.
Evidence of the extent of that ignorance should be weighed
by the factfinder together with the totality of the other
circumstances surrounding the infringer’s culpability.
See Comark, 156 F.3d at 1191 (evaluating opinion of counsel
within a totality of the circumstances).
Here, substantial evidence supports a finding that Stryker
ignored the November 2003 opinion letter to an extent
sufficient to permit willfulness to be found in these
circumstances. Most notable is the fact that two patent
attorneys, Graalfs and Augustin, had at first strongly
discouraged Stryker from marketing the infringing nail in
the United States. Despite that advice, Stryker continued to
push towards a United States market entry, filing its FDA
application months before it received Augustin’s revised legal
advice. Additionally, Acumed presented evidence that Stryker
copied its product, including that Stryker arranged to
“confiscate” a hospital room chart instructing doctors in the
use of the Acumed nail.
There is evidence in the record tending against
willfulness, such as the Augustin opinion letter itself and
2la
Appendix A
the testimony of Stryker’s Director of Intellectual Property
that he ordered no sales be made in the United States until
after the favorable opinion letter. However, it is for the jury,
not this court, to determine the weight and credibility to be
given to the evidence. See Comark, 156 F.3d at 1192 (court
determining whether to overturn a jury verdict is “not
required to assume that the jury believed all or indeed any
... exculpatory evidence”). The jury here was free to
disbelieve or weigh lightly evidence tending to show
Stryker’s reliance on the opinion letter and to place that
evidence within the overall factual context of the case.
Substantial evidence supports the jury’s finding that
Stryker’s infringement was willful. The judgment of
willfulness is therefore affirmed.
D. Permanent Injunction
In ruling on the plaintiffs’ motion for a permanent
injunction, the district court applied “the general rule [in
patent cases] that an injunction will issue, once infringement
and validity have been adjudged ... unless there are some
exceptional circumstances that justify denying injunctive
relief.” Transcript of Record at 53, Acumed, LLC v. Stryker
Corp., No. CV-04-513 (D. Oregon Feb. 22, 2006). The
Supreme Court has since struck down that general rule in
eBay v. MercExchange, making clear that the traditional four-
factor test for injunctions applies to patent cases. 126 S.Ct.
at 1840.
Acumed argues that the facts found by the district court
can serve as independent support for the injunction, even
22a
Appendix A
without application of the old general rule. This court cannot
express a position on that argument. If we were to weigh the
evidence ourselves to reach a conclusion on injunctive relief,
we would effectively be exercising our own discretion as if
we were the first-line court of equity. That role belongs
exclusively to the district court. Our task is solely to review
the district court’s decisions for an abuse of discretion. See
eBay, 126 S.Ct. at 1839 (“The decision to grant or deny
permanent injunctive relief is an act of equitable discretion
by the district court, reviewable on appeal for abuse of
discretion.”). Accordingly, the permanent injunction is
vacated. On remand, the district court should reconsider the
four-factor test as propounded by the Supreme Court’s
decision in eBay as to whether or not an injunction should
issue.
Ill. CONCLUSION
The district court’s claim construction and its findings
of infringement and willfulness are affirmed. The permanent
injunction is vacated and remanded.
AFFIRMED-IN-PART, VACATED-IN-PART,
AND REMANDED
No costs.
23a
Appendix A
MOORE, Circuit Judge, dissenting.
I agree with the majority’s holding in all respects save
one. I write separately to voice my disagreement with the
majority’s holding that the district court properly construed
“transverse holes” in claim | of the ’444 patent to mean
“holes across the butt portion of the nail.” Because the
majority concludes that the district court’s claim construction
was proper, it affirms the court’s finding of literal
infringement. From that decision, I respectfully dissent.
At the outset, I note that I am troubled by the district
court’s clear reliance on a common English language
dictionary, which was published ten years after the 444
patent issued to construe the term “transverse holes.” During
the claim construction hearing, the court explained that the
dictionary would be “an aid to our work.” The court not only
used the dictionary as an “aid,” but actually utilized the
dictionary definitions as the starting point when defining each
of the disputed claim terms.' Moreover, the court seemed to
disregard the briefs in favor of off-the-cuff attorney argument
during claim construction. In fact, when Stryker argued that
1. It should be noted that the claim construction hearing in this
case occurred before this court’s en banc decision in Phillips v.
AWH Corp., 415 F.3d 1303, 1313 (Fed.Cir.2005). Thus, the district
court may have been following the methodology described in Texas
Digital Systems, Inc. v. Telegenix, Inc., 308 F.3d 1193, 1201-02,
(Fed.Cir.2002), which relied heavily on the use of dictionaries to
ascertain the plain meaning of a claim term. After our Phillips
decision, which clarified that the Texas Digital approach was not
appropriate, the plaintiff asked the district court here to reconsider
her claim construction, but that request was denied.
24a
Appendix A
Acumed’s attorneys were changing their claim construction
during the course of the hearing, the district court responded:
“Let’s not worry about changing. I’m going to keep you all
focused right on the task at hand. I don’t care what happened
before today. I care what’s going on here.” After hearing
arguments from the parties regarding the disputed claim terms
and on the appropriateness of the dictionary definitions, the
district court resolved each issue orally during the hearing.
One week later, the court issued a one-page formal Order on
Claim Construction that simply reiterated the court’s oral
rulings. Acumed LLC v. Stryker Corp., No. 04-cv-513-br
(D.Or. Oct. 14, 2004).
While I acknowledge that there are not formal
requirements for a district court’s methodologies when
conducting claim construction hearings and issuing related
orders, I raise this concern because I believe the district
court’s methodology led it astray from determining the “the
meaning that the term [“transverse holes”] would have to a
person of ordinary skill in the art ... in the context of the
entire patent, including the specification.” Phillips v. AWH
Corp., 415 F.3d 1303, 1313 (Fed.Cir.2005) (en banc). When
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.
With respect to the claim term “transverse holes,” the
district court utilized the dictionary to first determine that a
“hole” is “an opening through something.” The district court
then referred to the dictionary and found two definitions for
99, 66
the term “transverse”: “(1) acting, lying, or being across: set
25a
Appendix A
crosswise; (2) made at right angles to the anterior-posterior
axis of the body.” The district court concluded that we should
construe the claim term in accordance with the broader of
the two dictionary definitions * because there is no express
disavowal of claim scope in the specification. This approach
was specifically rejected by this court sitting en banc in
Phillips, 415 F.3d at 1320, and we have continued to reject
this approach to claim construction. See On Demand
Mach. Corp. v. Ingram Indus., Inc., 442 F.3d 1331, 1340
(Fed.Cir.2006).
In accordance with 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.
Phillips, 415 F.3d at 1321. The intrinsic evidence provides
no support for the broader of the two dictionary definitions
set forth above (i.e., that “transverse” means “acting, lying,
or being across; set crosswise”), but fully supports the |
narrower definition (i.e., that “transverse” means “made at
right angles to the anterior-posterior axis of the body”). Each
of the eight transverse holes described in the specification
are specifically described as being perpendicular. /d. at col.2
11.57-59 (describing “a plurality of transverse holes, each of
which is defined on a respective axis intersecting the nail
axis 22, and perpendicular to the portion of the nail axis at
the butt portion 14 of the nail’); col.3 Il. 1-3 (“transverse hole
2. The court emphasized that the broader definition appeared
as the “number one” definition in Webster's dictionary. It should be
noted, however, that this order is not indicative of importance or
primacy, but merely reflects historical usage. Merriam-Webster’s
Collegiate Dictionary (11th ed.2003) 19a (“Order of Scnses”).
26a
Appendix A
44a is oriented . . . perpendicular to the nail axis 22”); col.3
11.9-11 (“the distal holes are ... perpendicular to the butt
end portion of the nail axis”) (emphases added). The majority
suggests that the use of both words “implies a difference
between the words ‘perpendicular’ and ‘transverse.’ ”
Maj. Op. at 11. The majority contends that if transverse was
meant to be construed as perpendicular, “the patentee would
not have needed to clarify that these holes, in addition to
being transverse, were perpendicular to the nail axis.” /d. I
disagree. First, the patentee used the two words to clearly
specify which of the definitions of transverse applied to his
invention; the purpose of using the word “perpendicular”
was to further describe what the inventor meant by the term
“transverse,” not to distinguish it as the majority suggests.
Second, to say that something is perpendicular also requires
mention of a reference plane or line to which the object is
located at a right angle. Here, the patent specification limits
the discussion of “transverse holes” to holes having an axis
perpendicular with respect to the nail axis at the butt portion.
444 patent, col.2 11.56-59. That was the point of using the
word perpendicular in the specification. Thus, by utilizing
the word “transverse,” the patentee did not need to repeat in
the claim that each hole was perpendicular to the nail axis at
the butt portion. —
The specification describes “three sets of transverse
holes.” /d. at col.2 1.62. W Ah reference to Figures | and 2 of
the patent, reproduced beiow, the first set includes four
proximal transverse holes (44a-44d), the second set is one
intermediate transverse hole (46), and the third set includes
three distal transverse holes (48a-48c). Each of these eight
holes is then described and shown in the accompanying
ili ciiancaiaiaiaiiaicaiaiiiai
27a
Appendix A
figures as being perpendicular to the nail axis 22. /d. at col.2
1.56-col.3 1.11. Most importantly, the specification states that
“a plurality of transverse holes each of which is defined ona
respective axis intersecting the nail axis 22, and
perpendicular to the portion of the nail axis at the butt portion
14 of the nail.” Jd. at col.2 11.56-59 (emphases added). Thus,
the specification limits each of the transverse holes by the
common characteristic that each has an axis perpendicular
to the nail axis at the butt portion.
There is not a single non-perpendicular, “transverse” hole
shown or described in the patent. Construing “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. Smith v. Snow, 294 U.S. 1, 14,55 S.Ct. 279, 79
L.Ed. 721, (1935) (stating “if the claim were fairly susceptible
of two constructions, that should be adopted which will
secure to the patentee his actual invention”). Since Phillips,
we have repeatedly rejected the concept of construing claim
terms to have meanings broader than the meaning derived
from the intrinsic evidence. For example, in Nystrom v. TREX,
Co. this court stated:
28a
Appendix A
[iJn 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 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.
424 F.3d 1136, 1145 (Fed.Cir.2005); see also Primos, Inc. v.
Hunter’s Specialties, Inc., 451 F.3d 841, 845, 847-48
(Fed.Cir.2006) (affirming district court’s claim construction
after district court rejected dictionary definition that was
broader and inconsistent with the use of the claim term in
the patent at issue); Old Town Canoe Co. v. Confluence
Holdings Corp., 448 F.3d 1309, 1318 (Fed.Cir.2006)
(patentee is “not entitled to a claim construction divorced
from the context of the written description and prosecution
history”); Atofina v. Great Lakes Chem. Corp., 441 F.3d 991,
996 (Fed.Cir.2006) (quoting Free Motion Fitness, Inc. v.
Cybex Int'l, Inc., 423 F.3d 1343, 1348-49 (Fed.Cir.2005) for
the proposition that “in those circumstances where reference
to dictionaries is appropriate, the [court’s] task is to scrutinize
the intrinsic evidence in order to determine the most
appropriate definition” (emphasis added)); In re Johnson,
435 F.3d 1381, 1384 (Fed.Cir.2006) (citing Phillips, 415 F.3d
at 1303 for the proposition that “[i]t is well established that
dictionary definitions must give way to the meaning imparted
by the specification”); Network Commerce, Inc. v. Microsoft
Corp., 422 F.3d 1353, 1359-60 (Fed.Cir.2005) (rejecting
ie iaiieidicaaemeaeuaillll
29a
Appendix A
proposed construction of the term “download component”
based on the combination of two dictionary definitions as
untenable “in light of the specification”).
Patent scope should be coextensive with what the
inventor invented as evidenced by what is disclosed in the
patent specification. Netword, LLC v. Centraal Corp., 242
F.3d 1347, 1352 (Fed.Cir.2001) (stating that the claims
should not “enlarge what is patented beyond what the
inventor has described as the invention”); Renishaw PLC v.
Marposs Societa’ per Azioni, 158 F.3d 1243, 1250
(Fed.Cir. 1998) (“The construction that stays true to the claim
language and most naturally aligns with the patent’s
description of the invention will be, in the end, the correct
construction.”). Thus, where, as here, the intrinsic evidence
clearly provides one meaning for the term “transverse,” it is
inappropriate to give that term a broader interpretation,
particularly where the only support for the broader
interpretation is extrinsic evidence—in this case, a dictionary
(which supports the narrower construction as well).
Moreover, the district court’s interpretation of “hole,”
which neither party is challenging, makes the majority’s
interpretation of “transverse” redundant and nonsensical. The
court found that the word “ ‘holes’ in the phrase ‘defining a
plurality of at least three transverse holes,’ means openings
through the butt portion of the nail.” Claim Construction
Order, at 1. This makes sense in the context of orthopedic
implants, because a hole is necessarily through the part, which
in the case of an intramedullary nail is to accept a screw.
Here, the majority’s definition of “transverse” as “being
across” is redundant when read together with the definition
30a
Appendix A
of holes. It makes the phrase “transverse holes” mean
“openings through across the butt portion of the nail.” The
majority’s claim construction thus impermissibly renders the
claim term “transverse” meaningless, a methodology that this
court has repeatedly denounced. Merck & Co. v. Teva Pharms.
USA, Inc., 395 F.3d 1364, 1372 (Fed.Cir.2005) (“A claim
construction that gives meaning to all the terms of the claim
is preferred over one that does not do so.”); see also Bicon,
Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed.Cir.2006);
Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc.,
- 424 F.3d 1293, 1307 (Fed.Cir.2005). Only if “transverse”
requires perpendicularity does each claim term have a distinct
meaning.’
That “transverse” means perpendicular in direction is
further supported by other intrinsic evidence, namely, other
patent references cited during prosecution of the ’444 patent.
For example, U.S. Patent No. 4,475,545, entitled “Bone
Nail,” discloses a pair of holes “passing through the nail in
transverse relation to its longitudinal direction and both axes
of the said both pairs of holes being located in different planes
extending in transverse direction relative to the longitudinal
direction of the nail.” ’545 patent, Abstract. The first hole is
defined by the nail entrance 8’ and exit 8. The second distal
hole is defined by the nail entrance 9” znd exit 9. As shown
3. Claim 22, which indirectly depends from independent claim
19, further illustrates this point. Claim 22 recites “a plurality of
second securement holes” in the butt portion of the claimed nail.
These holes, like the transverse holes in claim 1, are required to go
through the butt portion of the nail. But unlike the transverse holes,
the securement holes need not be defined by an axis perpendicularly
Situated with respected to the nail axis at the butt portion.
3la
Appendix A
in Figures 4 and 5, both of these holes are perpendicular to
the longitudinal axis of the nail at the distal portion. The
hole axes are similarly described as being located in a plane
“normally extending relative to the longitudinal axis of the
nail.” ’545 patent, col.3 11.45-46. Thus, the usage of
“transverse” in the ’545 patent is consistent with the
definition requiring perpendicularity.
The narrower definition of transverse is also more
consistent with extrinsic evidence that demonstrates how
those skilled in the art would understand the term. First, in
another patent application filed within a year of the issue
date of the °444 patent, the *444 patent’s inventor, Randall
Huebner, uses the word “transverse” in a way that clearly
denotes perpendicularity in direction. There, as here, Mr.
Huebner describes a “transverse hole” extending through a
shaft, stating “the head [of the shaft] includes a hole
extending therethrough in a direction generally transverse to
the axis of the shaft.” U.S. Patent No. 5,697,934, col.2 11.45-
46 (filed Dec. 2, 1996); see also id. at col.3 1.66-col.4 1.1
(describing another hole as “formed through head 50 with a
central axis 54 generally transverse to elongate axis 38 of
shaft 32”). Mr. Huebner’s use of transverse in that application
clearly shows a directional requirement implicit in the term
“transverse” that is not encompassed in the broader definition
accepted by the majority. Next, although the district court
chose to rely exclusively on a general dictionary that was
not contemporaneous with the patent, technical dictionaries,
including one highly relevant to the field of orthopedic
implants at the time the patent issued, define “transverse” as
referring to a perpendicular direction. Dorland’s Medical
Dictionary defines transverse as “placed crosswise; situated
32a
Appendix A
at right angles to the long axis of a part.” Dorland’s Illustrated
Medical Dictionary 1735 (28th ed.1994).
Thus, the intrinsic and extrinsic evidence establish that
the ’444 patent’s use of “transverse” is only consistent with
the narrower definition rejected by the district court and the
majority opinion. The only passage of the specification which
the majority relies upon to support its broader interpretation
of “transverse holes” is the language “[t]he predictability of
fracture modes makes the orientation of holes in the
illustrated embodiment suitable in most cases.” The majority
suggests that this language “admits that the disclosed
perpendicular hole orientation may not always be ideal.” Maj.
Op. at 12. I respectfully submit that the majority has taken
the language out of context and imparted a meaning to it
that is not correct. The entire paragraph wherein this sentence
is found is discussing Figure 4 and the orientation of the
holes relative to each other around the circumference of the
nail, not relative to the nail axis at the butt portion 22. That
paragraph focuses on the need to orient the screws “to prevent
rotation or axial movement of the nail” and discusses that
the screws should be located on “opposite sides of the nail.”
"444 patent, col.4 11.61-65. Hence, when the very next
sentence of the specification refers to the “orientation of the
holes,” ’444 patent, col.4 11.65-67, it is doing so in the context
of their placement around the nail.
Tellingly, the majority opinion offers no other support—-
intrinsic or extrinsic—for its construction, and in fact, offers
no explanation at all for its conclusion that “the claim
language covers all ‘transverse’ holes—a word that does not
33a
Appendix A
necessarily imply right angles.”* Maj. Op. at 11. 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, which it acknowledged supported both
the definition across and perpendicular. In the present case,
as in Nystrom, 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. When one begins with the patent
specification, in my opinion, there is no doubt which of the
two meanings of “transverse” is correct.
The majority attempts to distinguish the Nystrom case
as a case in which the patentee “sought to have [the] claim
[at issue] ‘broaden[ed] . . . to encompass relatively obscure
definitions that are not supported by the written description
or prosecution history.’ ” Maj. Op. at 14 (quoting Nystrom,
424 F.3d at 1145). The majority suggests that in Nystrom
“{w]e refused to impose a construction broader than the
term’s ordinary meaning.” Maj. Op. at 14. In this case, the
Webster’s Dictionary which provided the basis for the district
court’s determination of the term’s ordinary meaning included
two definitions for the term transverse (across and
perpendicular). Even the district court acknowledged both
definitions. In this case, we must choose between two plain
meanings of the word “transverse.” As in Nystrom, we should
4. The majority’s observation that “[nJowhere in the
specification or the prosecution history do the patentees criticize or
distinguish tilted, non-perpendicular holes,” Maj. Op. at 12, only
underscores the absence of a written description broad enough to
support the meaning that they attribute to the claim term “transverse.”
~ 34a
Appendix A
interpret the claim term by reference to the specification and
refuse to read the term “transverse” as encompassing
meanings unsupported by even a modicum of intrinsic
evidence; otherwise we give the patentee more than what
was invented and disclosed to the public.
Even if I did not read the intrinsic record to clearly
support the narrower of the two plain and ordinary meanings
of the term “transverse,” I would still be compelled by our
precedent to conclude that the narrower meaning applies to
this limitation. In Athletic Alternatives, Inc. v. Prince
Manufacturing, Inc., this court was presented with a case in
which there were two plain and ordinary meanings of a term.
73 F.3d 1573, 1579 (Fed.Cir.1996). The court was at an
impasse after concluding that the specification, the
prosecution history and the doctrine of claim differentiation
did not provide guidance on what the plain meaning of the
claim term at issue was. /d. at 1579-81 (concluding that “the
specification is completely silent with regard to the meaning”
of the claim term; that there were “[t]wo strong and
contradictory interpretative strands run[ning] through the
patent’s prosecution history ... [that] together ... are
irreconcilable;” and that after analyzing claim differentiation
“we [were] left with two equally plausible meanings of Claim
1”). Faced with such a conundrum, we resorted to the
statutory basis for the claims themselves, 35 U.S.C. § 112,
q 2, and concluded that
[w]ere we to allow [the patentee] successfully to
assert the broader of the two senses of [the claim
term] against Prince, we would undermine the fair
notice function of the requirement that the
35a
Appendix A
patentee distinctly claim the subject matter
disclosed in the patent from which he can exclude
others temporarily. Where there is an equal choice
between a broader and a 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.
Id. at 1581.
Even if the specification was completely silent on
whether the transverse holes had to be perpendicular to the
nail axis at the butt portion of the nail—which, as discussed
above, I do not believe it is—we must, according to our
precedent, adopt the narrower of the two plain and ordinary
meanings of the word “transverse.” Accord Athletic
Alternatives, 73 F.3d at 1581. The majority’s rejection of
Stryker’s claim construction position as “an improper attempt
to read a feature of the preferred embodiment into the claims
as a limitation,” fails to identify any language in the
specification that demonstrates that the patentee
contemplated anything more than transverse holes that are
perpendicular to the nail axis at the butt portion. Thus, even
adopting the majority’s view of the intrinsic record, I cannot
agree with their conclusion.
Based on the foregoing, I conclude that the district court’s
construction of the term “transverse holes” was improper
and should be reversed. The term “transverse holes” in claim
| of the *444 patent should be interpreted as “openings
36a
Appendix A
through the butt portion of the nail oriented perpendicularly
with respect to the longitudinal axis of the butt portion.”
Because the uncontested evidence shows that the alleged
infringing products do not literally infringe claim 1 of the
°444 patent as properly construed, a remand on that issue
would not be necessary. Acumed could, however, argue that
Stryker’s T2 PHN products infringe claim | of the 444 patent
under the doctrine of equivalents.* Accordingly, I would
reverse the judgment of literal infringement and remand for
proceedings with respect to infringement under the doctrine
of equivalents.
5. Although Stryker argues that Acumed waived the doctrine
of equivalents with respect to this claim element because it did not
assert that theory at trial under the court’s claim construction, that
statement is incorrect. See Exxon Chem. Patents, Inc. v. The Lubrizol
Corp., 137 F.3d 1475, 1479 (Fed.Cir. 1998) (determining that plaintiff
did not waive equivalents arguments where the court's claim
construction made a doctrine of equivalents argument under any other
claim construction “moot”).
37a
APPENDIX B — ORDER OF THE UNITED STATES
COURT OF APPEALS FOR THE FEDERAL CIRCUIT
DENYING PETITION FOR REHEARING
FILED JUNE 5, 2007
UNITED STATES COURT OF APPEALS
FOR THE FEDERAL CIRCUIT
ORDER
A combined petition for panel rehearing and for rehearing
en banc having been filed by the Appellants, and a response
thereto having been invited by the court and filed by the
Appellee, and the petition for rehearing and response, having
been referred to the panel that heard the appeal, and thereafter
the petition for rehearing en banc and response having been
referred to the circuit judges who are in regular active service,
UPON CONSIDERATION THEREOF, it is
ORDERED that the petition for panel rehearing be, and
the same hereby is, DENIED and it is further
ORDERED that the petition for rehearing en banc be,
and the same hereby is, DENIED.
The mandate of the court will issue on June 12, 2007.
FOR THE COURT,
s/ Jan Horbaly
Jan Horbaly
Clerk
Dated: 06/05/2007
38a
APPENDIX C — ORDER OF THE UNITED STATES
COURT OF APPEALS FOR THE FEDERAL
CIRCUIT FILED MARCH 16, 2006
UNITED STATES COURT OF APPEALS
FOR THE FEDERAL CIRCUIT
2006-1260
ACUMED LLC,
Plaintiff-Appellee,
v.
STRYKER CORPORATION, STRYKER SALES
CORPORATION, HOWMEDICA OSTEONICS
CORPORATION, and STRYKER ORTHOPAEDICS,
Defendants-Appellants.
ON MOTION
Before MICHEL, Chief Judge, LOURIE and GAJARSA,
Circuit Judges.
LOUREE, Circuit Judge.
ORDER
Stryker Corporation et al. (Stryker) move for a stay,
pending appeal, of the permanent injunction entered by the
United States District Court for the District of Oregon on
February 23, 2006. Acumed, LLC (Acumed) oppose.
39a
Appendix C
Acumed sued Stryker for infringement of its patent
relating to a humeral nail for fixing humeral fractures. A jury
found infringement and the district court enjoined Stryker
from, inter alia, selling several models of its T2 Proximal
Humeral Nail. Stryker moves for a stay of the injunction
pending appeal.
In deciding whether to grant a stay or injunction, pending
appeal, this court “assesses the movant’s chances of success
on the merits and weighs the equities as they affect the parties
and the public.” E. I. du Pont de Nemours & Co. v. Phillips
Petroleum Co., 835 F.2d 277, 278 (Fed. Cir. 1987). See also
Standard Havens Prods. v. Gencor Indus., 897 F.2d 511 (Fed.
Cir. 1990). To prevail, a movant must establish a strong
likelihood of success on the merits or, failing that,
nonetheless demonstrate a substantial case on the merits
provided that the harm factors militate in its favor. Hilton v.
Braunskill, 481 U.S. 770, 778 (1987). The harm factors are
(1) whether the applicant will be irreparably harmed absent
a Stay, (2) whether issuance of a stay will substantially injure
the other parties interested in the proceeding, and (3) where
the public interest lies. Standard Havens, 897 F.2d at 512.
Stryker argues that the district court likely erred in its
claim construction and that the harm factors tip strongly in
its favor, particularly the public interest. Stryker attaches
declarations from a number of doctors who state that when
treating patients with nail implants, they generally prefer
Stryker’s T2 humeral nail products and that it would be in
the best interest of their patients to have continued access to
the products. With respect to harm to Acumed, Stryker points
out that Acumed has licensed other competitors and thus
40a
Appendix C
shown that it is not maintaining exclusive rights to itself in
the marketplace. Stryker states that it is willing during the
pendency of the appeal to deposit quarterly in an escrow
account an amount of $455.66 per unit as determined by the
jury as damages for past infringement, multiplied by the
quantity of T2 proximal humeral nails sold during that
quarter.
All the stay factors are important in determining whether
to grant or deny a motion for a stay, pending appeal. However,
the public interest is sometimes a particularly important factor
when the products involved in a patent suit are medical
devices or methods. Because this is such a case and the other
stay factors tip in Stryker’s favor, we grant Stryker’s motion
f. 1 stay conditioned on its offer to deposit funds in an
escrow account.
Accordingly,
IT IS ORDERED THAT:
(1) Stryker’s motion for a stay, pending appeal, is
granted.
(2) Stryker is directed to deposit into an escrow account,
set up through the district court, the amount as discussed
above.
MARCH 16, 2006
Date
FOR THE COURT
s/ Alan D. Lourie
Alan D. Lourie
Circuit Judge
4la
APPENDIX D — JUDGMENT OF THE UNITED STATES
DISTRICT COURT FOR THE DISTRICT OF OREGON
DATED APRIL 20, 2006
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF OREGON
Case No. 04-CV-513-BR
Judge Anna J. Brown
ACUMED LLC,
Plaintiff,
¥.
STRYKER CORPORATION, STRYKER SALES
CORPORATION, STRYKER ORTHOPAEDICS, and
HOWMEDICA OSTEONICS CORPORATION,
Defendants.
JUDGMENT
This case having been tried and a verdict having been
returned in favor of plaintiff, Acumed LLC, on September
20, 2005 finding that defendants, Stryker Corporation,
Stryker Sales Corporation, Stryker Orthopaedics and
Howmedica Osteonics Corporation (con. ctively “Stryker”),
did not prove that any of the asserted claims are invalid
because of indefiniteness, anticipation and obviousness. In
addition, the jury found that Acumed proved that Stryker's
T2 Proximal Humeral Nail infringed claims 1, 3-5, 10, 11,
42a
Appendix D
14-17 of United States Patent No. 5,472,444. The jury also
returned a verdict against Stryker finding that its infringement
was willful. To compensate Acumed for the infringement,
the jury found that Acumed is entitled to lost profits on 60%
of Stryker's sales for a total of $419,683.00 and a reasonable
royalty rate of 14% for certain of Stryker's sales for a total of
$39,170.00.
IT IS HEREBY ORDERED, that judgment be entered
as follows: .
Acumed LLC is awarded enhanced damages of fifty-
percent of the total amount of damages awarded by the jury
for the reasons set forth in the Court's Opinion and Order
dated April 17, 2006. The jury awarded Acumed $458,853.00
and, therefore, the total enhanced award is $688,280.00. In
addition, Acumed is awarded prejudgment interest in the
amount of $20,517.00 (through April 17, 2006). Said
prejudgment interest will be paid in addition to the
$688,280.00 already awarded.
Hence, final judgment on the jury verdict shall be entered
in favor of Acumed LLC, and against Stryker Corporation,
Stryker Sales Corporation, Stryker Orthopaedics and
Howmedica Osteonics Corporation, in the amount of
$708,797.00.
DATED: ENTERED:
4/20/06 s/ Anna J. Brown
Honorable Anna J. Brown
United States District Judge
43a
APPENDIX E — ORDER ON CLAIM CONSTRUCTION
OF THE UNITED STATES DISTRICT COURT FOR THE
DISTRICT OF OREGON DATED OCTOBER 14, 2004
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF OREGON
Case No. 04-CV-513-BR
ACUMED LLC,
Plaintiff,
v.
STRYKER CORPORATION and
STRYKER SALES CORPORATION,
Defendants.
ORDER ON CLAIM CONSTRUCTION
This matter coming before the Court for a Markman
hearing on October 7, 2004 on the disputed terms of U.S.
Patent No. 5,472,444, it is hereby ORDERED, for the reasons
expressed by the Court during the hearing, that the disputed
claim terms are construed as follows:
1. The “shank” is the portion of the rod or nail
extending from the butt of the nail.
2. A “curved shank” is a shank that has a bend or
deviation from a straight line without sharp corners
or sharp angles.
Dated:
44a
Appendix E
“Holes” (in the phrase “defining a plurality of at least
three ‘transverse holes’”) means openings through
the butt portion of the nail. “Transverse” in the same
phrase means “being across” or “set crosswise.”
“Transverse holes,” therefore, means holes across
the butt portion of the nail.
In the phrase “with the three hole axes angularly
offset from each other,” the term “angularly offset
from each other” means the axes of the three holes
are spaced apart from each other, an angle is formed
by the axes of any two such holes when viewed in
two dimensions from the butt end or from the side,
and the axes are not aligned in a parallel orientation.
14 October, 2004
ENTERED:
s/ Anna J. Brown
Honorable Anna J. Brown
45a
APPENDIX F— ORDER OF THE UNITED STATES
DISTRICT COURT FOR THE DISTRICT OF OREGON
DATED AUGUST 8, 2005
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF OREGON
CV 04-0513-BR
ACUMED LLC, a Delaware limited liability company,
Plaintiff,
v.
STRYKER CORPORATION, STRYKER SALES
CORPORATION, STRYKER ORTHOPAEDICS, and
HOWMEDICA OSTEONICS CORP.,
Defendants.
ORDER
BROWN, Judge.
This matter comes before the Court on Defendants’
Motion for Reconsideration of Order on Claim Construction
(#95). Defendants argue the Federal Circuit’s recent decision
in Phillips v. AWH Corp., Nos. 03-1269, 03-1286, 2005 WL
1620331 (Fed. Cir. Jul. 12, 2005), requires the Court to
reconsider its claim construction rulings in this action.
For the reasons that follow, the Court DENIES
Defendants’ Motion.
46a
Appendix F
In Phillips, the Federal Circuit affirmed the claim
construction methodology previously set forth in Markman
v. Westview Instruments, Inc., 517 U.S. 370 (1996), and
Vitronics v. Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582
(Fed. Cir. 1996), and clarified the proper use of dictionaries
in claim construction. The Phillips court stated:
The underlying goal of our decision in Vitronics
was to increase the likelihood that a court will
comprehend how a person of ordinary skill in the
art would understand the claim terms. In that
process, we recognized 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.
2005 WL 1620331, at *16.
The Phillips court reiterated the importance of the
intrinsic record in the claim construction process and
cautioned trial courts not to elevate extrinsic sources,
especially dictionaries, above unambiguous specification
language. /d., at *13-14. The court rejected the methodology
set forth in Texas Digital v. Systems, Inc. v. Telegenix, Inc.,
308 F.3d 1193, 1201-02 (Fed. Cir. 2002), because it
improperly restricted the role of the patent specification in
claim construction.
47a
Appendix F
Defendants contend the Court’s claim construction in
this case must be reconsidered in light of Phillips because
“the Court relied heavily on dictionary definitions . . . [and]
did not give appropriate weight to the context in which those
terms were used throughout the patent specification.”
This Court, however, followed the methodology of
Vitronics when it construed the disputed claim terms in this
matter. Although the Court utilized a dictionary in the claim
construction process, it did not elevate the dictionary
meanings over unambiguous patent specification language.
The Court carefully examined the patent specification at
every step of the claim construction and used a dictionary to
help clarify ambiguous terms.
Accordingly, the Court concludes Phillips does not
require the Court to reconsider its claim construction rulings
in this matter, and the Court, therefore, DENIES Defendants’
Motion for Reconsideration of Order on Claim Construction
(#95).
IT IS SO ORDERED.
DATED this 8" day of August, 2005.
/s/ Anna J. Brown
ANNA J. BROWN
United States District Judge
48a
APPENDIX G — JURY VERDICT
DATED SEPTEMBER 20, 2005
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF OREGON
Case No. 04-CV-513-BR
ACUMED LLC,
Plaintiff,
V.
STRYKER CORPORATION, STRYKER SALES
CORPORATION, STRYKER ORTHOPAEDICS, and
HOWMEDICA OSTEONICS CORP.,
Defendants.
VERDICT
We, the jury, unanimously answer these Verdict
Questions as follows:
1. AS TO DEFENDANTS’ BURDEN TO PROVE
INVALIDITY BASED ON INDEFINITENESS:
Do you find Defendants have proved by clear and convincing
evidence that Claim | of the ’444 patent is invalid as
indefinite?
Yes No ¥
Proceed to Question 2.
49a
Appendix G
2. AS TO DEFENDANTS’ BURDEN TO PROVE
INVALIDITY BASED ON ANTICIPATION:
2A. Do you find Defendants have proved'by clear and
convincing evidence that Claim 1 of the ’444 patent is invalid
as anticipated by the Alta Humeral/Tibial Nail with Locking
Tab?
Yes, No,
Proven Invalid Not Proven Invalid
Claim | Y
If you answer “no,” proceed to Question 3.
* * *
3. AS TO DEFENDANTS' BURDEN TO PROVE
INVALIDITY BASED ON OBVIOUSNESS:
3A. Do you find Defendants have proved by clear and
convincing evidence that Claim | of the ’444 patent is invalid
as obvious in view of (1) the Alta Humeral/Tibial Nail with
Locking Tab alone or in combination with either or both the
Biomet Uniflex or the Greene U.S. Patent No. 5,248,313; or
(2) the Biomet Uniflex and the Greene U.S. Patent No.
5,248,313 combined?
Yes, No,
Proven Invalid Not Proven Invalid
Claim | Y
50a
Appendix G
4. AS TO PLAINTIFF'S BURDEN TO PROVE
INFRINGEMENT:
4A. Do you find Plaintiff has proved by a preponderance
of the evidence that Defendants have infringed Claim | of
the ’444 patent?
Yes - Proven Infringed No - Not Proven Infringed
Claim 1 ¥
If you answer “no,” then your verdict is for Defendants. Do
not answer any further questions. Your Presiding Juror should
sign and date the Verdict.
If you answer "yes," proceed to Question 4B.
4B. Do you also find Plaintiff has proved by a
preponderance of the evidence that Defendants have infringed
any of the following additional claims? Please answer as to
each claim.
Yes, No,
Proven Infringed Not Proven Infringed
Claim 3
Claim 4 Y
Claim 5 Y
Claim 10 Y
Sla
Appendix G
Claim 11 ¥
Claim 14 vA
Claim 15 WA
Claim 16 Y
Claim 17 WA
Proceed to Question 5.
5. AS TO PLAINTIFF'S BURDEN TO PROVE
WILLFULNESS:
If you found infringement of any claim of the “444 patent,
do you find that Plaintiff has proved by clear and convincing
evidence that Defendants’ infringement of such claim(s) was
willful?
Yes PS ane
Proceed to Question 6.
52a
Appendix G
6. AS TO PLAINTIFF'S BURDEN TO PROVE
DAMAGES:
Has Plaintiff proved by a preponderance of the evidence that
it is entitled to lost profits damages? If so, what portion of
Defendants’ sales has Plaintiff proved that it would have
made?
v¥_ Yes, Plaintiff has proved that it is entitled to lost
profits on 60% of Defendants’ sales.
If you answer “yes,” what are Plaintiff’s lost
profits damages?
$419,683.00
No, Plaintiff has not proved entitlement to lost
profits.
Proceed to Question 7.
7. Plaintiff has proved by a preponderance of the evidence
that it is entitled to a reasonable royalty rate of 14% from
which we find $39,170.00 reasonable royalty damages.
Once you have answered unanimously all required
questions, your Presiding Juror should sign and date this
Verdict.
Dated this 20 day of September, 2005.
s/ Elisabeth Nelson
Presiding Juror
53a
APPENDIX H — OPINION AND ORDER OF THE
UNITED STATES DISTRICT COURT FOR THE
DISTRICT OF OREGON DATED APRIL 17, 2006
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF OREGON
No. 04-CV-0513-BR
ACUMED LLC, a Delaware limited liability company,
Plaintiff,
v.
STRYKER CORPORATION, STRYKER SALES
CORPORATION, STRYKER ORTHOPAEDICS,
and HOWMEDICA OSTEONICS CORP.,
Defendants.
OPINION AND ORDER
BROWN, Judge.
This matter comes before the Court on Plaintiff Acumed
LLC’s Motion for Treble Damages and Prejudgment Interest
Pursuant to 28 U.S.C. § 284 (#163).
For the reasons that follow, the Court GRANTS in part
and DENIES in part Acumed’s Motion and awards Acumed
a fifty-percent enhancement of damages determined by the
jury for a total award of $688,280. The Court also awards
Acumed prejudgment interest in the amount of $20,517.
54a
Appendix H
PROCEDURAL BACKGROUND
In April 2004, Acumed brought this action against
Defendants for infringement of United States Patent No.
5,472,444 (’444 Patent). The 444 Patent describes a humeral
nail used for the treatment of bone fractures, specifically for
the fixation of fractures of the proximal humeral cortex.
Acumed manufactures and sells patented humeral nails under
the names Polarus and Polarus Plus. Acumed alleged
Defendants infringed the °444 Patent by manufacturing,
using, selling, importing, and offering for sale their T2
Proximal Humeral Nail.
The case was tried to a jury on September 13-20, 2005.
On September 20, 2005, the jury found in favor of Acumed.
In response to special verdict questions, the jury found the
444 Patent was valid and that Defendants willfully infringed
Claims 1, 3-5, 10, 11, and 14-17 of the ’444 Patent. The jury
awarded Acumed damages in the form of lost profits in the
amount of $419,683.00 and a reasonable royalty in the
amount of $39,170.00.
On February 22, 2006, the Court heard oral argument on
the following four post-trial motions:
1. Acumed’s Motion for Permanent Injunction (#161);
2. Defendants’ Motion for Stay of Injunctive Relief
Pending Appeal (#172);
3. Defendants’ Motion for JMOL or a New Trial on the
Issues of Infringement, Willfulness, and Lost Profits (#174);
and
55a
Appendix H
4. Acumed’s Motion for Treble Damages and
Prejudgment Interest Pursuant to 28 U.S.C. § 284.
At the hearing, the Court resolved the first three Motions
on the record. Accordingly, this Opinion and Order addresses
only Acumed’s Motion for Treble Damages.
STANDARDS
In a patent action, the court may “increase the damages
up to three times the amount found or assessed.” 35 U.S.C.
§ 284. Enhanced damages are punitive rather than
compensatory. SRI Int’l, Inc. v. Advanced Tech. Lab., Inc.,
127 F.3d 1462, 1464 (Fed.Cir.1997). When willful
infringement has been found, “the enhancement of damages
and the amount thereof remains within the discretion of the
court.” Id. at 1468-69.
The principal considerations in enhancement of
damages are the same as those of the willfulness
determination, but in greater nuance as may affect
the degree of enhancement. Thus egregiousness
of the infringer’s conduct may receive greater
emphasis, as may any mitigating factors. All
aspects relevant to a particular case should be
given the weight appropriate to their substance.
A broad range of discretion is reposed in the trial
court, founded on this need to weigh and balance
multiple factors in determining a just remedy.
Id. at 1469.
56a
Appendix H
A finding of willful infringement, however, does not
mandate enhancement of damages. Read Corp. v. Portec, Inc.,
970 F.2d 816, 826 (Fed.Cir.1992). The paramount
consideration when deciding whether to grant enhancement
“is the egregiousness of the defendant’s conduct based on
all the facts and circumstances.” /d.
Courts may consider various factors when deciding
whether to enhance damages, including the following:
1.
oS OO 3 FF FF
whether the infringer deliberately copied the ideas
or design of another,
whether the infringer investigated the scope of the
patent and formed a good-faith belief that it was
invalid or not infringed,
the infringer’s behavior as a party to the litigation,
the infringer’s size and financial condition,
the closeness of the case,
the duration of the defendant’s misconduct,
any remedial action taken by the defendant,
the defendant’s motivation for harm, and
whether the defendant attempted to conceal its
conduct.
Read, 970 F.2d at 827.
57a
Appendix H
DISCUSSION
A. Enhancement of Damages
As noted, after a five-day trial, the jury concluded
Defendants willfully infringed the ’444 Patent when they
marketed and sold the T2 nail. The jury awarded Acumed
damages for lost profits and a reasonable royalty. Acumed
now argues the Court should trebie the jury’s damages award
due to Defendants’ egregious conduct.
The Court has considered the evidence in the record and
the parties’ written and oral arguments as to the application
of the factors set forth in Read and finds the following:
1. Defendants’ Deliberate Copying
Defendants do not deny they set out to develop a device
similar to the Polarus in order to achieve the same purpose
as the Polarus; namely, the fixation of proximal humeral
fractures. In their early planning for a proximal humeral nail
device, Defendants considered two different designs: a
curved-nail design based on the Polarus nail and a straight-
nail design based on the Aesculap nail. Defendants’ nail
design, like the Polarus, specified a precise length of 150
millimeters. There was not another device on the market with
that precise dimension. Defendants ultimately decided to
proceed with the curved-nail design.
58a
Appendix H
In its patent application for the T2 nail, Defendants state
they learned about its design features by means of the ’444
Patent. In their application, Defendants state:
This invention is related ... to a humeral nail
having a plurality of holes being angularly offset,
both in a plane perpendicular to the nail axis and
at an angle to that plane. ... A humeral nail of
the described type has become known from U.S.
Patent No. 5,472,444.
In addition, in their 510(k) application to the Food and Drug
Administration for approval of the T2 nail, Defendants
referenced the Polarus nail. Acumed also presented
evidence at trial that Joseph DiCicco, a Stryker employee,
“confiscated” an otherwise confidential Polarus operating-
room chart from a hospital. The chart described how to use
the Polarus nail.
On this record, the Court finds there is sufficient evidence
to establish that Defendants deliberately copied the Polarus
nail. This factor, therefore, weighs in favor of enhancement
of Acumed’s damages.
2. Defendants’ Investigation and Good-Faith Belief
that They Did Not Infringe the ’444 Patent
Defendants received warnings from two different lawyers
that the “curved-shank” design would infringe the °444
Patent. In a letter dated November 14, 2002, Edo Graalfs,
Stryker’s German patent attorney, asked Raymond Augustin,
Stryker’s United States patent attorney, to “find out whether
59a
Appendix H
... It might be possible to find a structure for a nail not
covered by” the ’444 Patent. On December 13, 2002,
Augustin wrote a “memo to file” in which he states the
proposed design of the T2 nail would infringe the ’444 Patent
and should not be marketed in the United States.
In spite of these two initial warnings, Defendants
proceeded with the curved-nail design for “business reasons.”
Those business reasons included specific goals to “attack”
Acumed, to target existing Polarus accounts, and to “take
75% of the Acumed business by the end of the first year in
the market.”
On November 19, 2003, however, Augustin issued a
formal, written opinion in which he concluded the T2 nail
did not infringe the ’444 Patent because the T2 nail does not
have a “curved shank” and, even if a court should find the
T2 had a curved shank, the ’444 Patent was likely to be
invalid as anticipated by the “Alta with Locking Tab” device.
Acumed argued at trial that Augustin’s opinion was obtained
by Defendants only to justify their planned infringement of
the ’444 Patent and the opinion did not provide a reasonable
basis for Defendants to believe the T2 did not infringe.
To reach the conclusion that Defendants’ infringement
was willful, the jury was required to find by clear and
convincing evidence that Defendants acted in disregard of
the ’444 Patent and lacked a reasonable basis to believe they
had a right to market the T2 nail. See Amstead Indus. v.
Buckeye Steel Casing, 24 F.3d 178, 181 (Fed.Cir. 1994). Even
after hearing evidence about Augustin’s second opinion, the
jury found Defendants’ infringement was willful. Thus, the
60a
Appendix H
jury implicitly rejected Defendants’ arguments that they had
a good-faith belief the patent was not infringed or, in any
event, that the patent was invalid. The Court, nonetheless,
does not conclude from this record that Defendants
egregiously ignored an objectively unreliable legal opinion.
The Court, therefore, finds this factor standing alone does
not warrant enhancement of Acumed’s damages.
3. Defendants’ Litigation Conduct
Acumed contends Defendants’ conduct during both the
pretrial phase of the case and the trial warrants an
enhancement of damages. Specifically, Acumed asserts
deposition conduct by Defendants’ counsel, Defendants’
repeated motions for reconsideration, their written discovery
responses, and their trial conduct were egregious.
A. Conduct during Depositions
During several depositions, Gregory Vogler, Defendants’
attorney, repeatedly interrupted Acumed’s lawyer and told
him that he was asking “stupid questions,” called Acumed’s
attorney a “rookie lawyer,” and told him at one point to “go
talk to your senior lawyer that knows how to take a deposition
and he might help you.” Although Vogler apologizes and
acknowledges responsibility in response to Acumed’s Motion
for Treble Damages, Defendants also assert Vogler’s
inappropriate comments “were made during an arduous week
of depositions” and these isolated comments did not rise to
a level of misconduct sufficient to support enhanced damages
in the context of the massive number of deposition questions
asked by Acumed.
6la
Appendix H
As the Court noted at oral argument, VWogler’s conduct
as reflected in the deposition transcripts was unacceptable,
unprofessional, and completely inexcusable. The Court
condemns the conduct of Stryker’s counsel but concludes
such conduct standing alone does not warrant enhancement
of damages.
B. Conduct During Discovery
Acumed argues Defendants denied nearly all of
Acumed’s Second Set of Requests for Admission without a
good-faith basis to do so and failed to supplement their
discovery responses to disclose Defendants’ launch of the
T2 Long nail. The Court, however, is not persuaded
Defendants engaged in discovery misconduct to a degree that
warrants enhancement of damages.
C. Motions for Reconsideration and Conduct
During Trial
Acumed asserts Defendants’ two motions for
reconsideration are evidence of litigation misconduct that
supports enhanced damages. Acumed also argues Defendants
continued to make the same claim construction arguments
during trial that the Court rejected in its claim-construction
rulings to the degree that Defendants effectively ignored the
Court’s rulings. In addition, Acumed argues Defendants’
witnesses were impeached at trial with their prior sworn
testimony “an extraordinary number of times.” Acumed also
asserts Peter Prager, Stryker’s Director of Product
Development, testified falsely on a number of points,
including his statements that Stryker’s repeated references
62a
Appendix H ~-
to the T2 as “curved” were a mistake and his testimony that
any similarities between the T2 and the Polarus were “sheer
coincidence.”
The Court finds Defendants’ conduct constituted
stubborn and unsuccessful advocacy of Defendants’ theories
of the case at worst and, therefore, does not warrant
enhancement standing alone.
In summary, the Court is not persuaded the record
establishes that Defendants’ conduct during this litigation
was in bad faith or otherwise sufficiently egregious to warrant
enhancement of damages.
4. Defendants’ Size and Financial Condition
Stryker is the largest orthopaedic implant company in
the world with 2004 sales in excess of $4 billion. Acumed
contends Stryker’s size and profits allowed Defendants to
“roll the dice” in this litigation with impunity and in the hope
that Acumed would be forced to give up. Acumed argues
trebling of damages is appropriate when a “market behemoth”
such as Stryker engages in wiilful infringement.
The Court agrees Stryker’s size and financial condition
made it possible for Defendants to pursue this litigation with
particular agression. In addition, enhancing Acumed’s
damages would not be an undue hardship to Defendants.
Accordingly, the Court concludes this factor weighs slightly
in favor of enhancement of damages.
63a
Appendix H
5. Closeness of the Case
The Court finds the issues of infringement and
willfulness presented classic jury questions. The evidence
did not overwhelmingly favor either side, and the jury could
have rejected Acumed’s claims. In other words, this was a
close case on many issues, including the willfullness of
Defendants’ infringement.
Accordingly, the Court finds enhancement of damages
based on this factor would result in punishing Defendants
for going to trial and seeking to provie legitimate defenses.
The Court concludes, therefore, this factor weighs against
enhancement of damages.
6. Duration of Defendants’ Misconduct
Acumed argues Defendants’ misconduct started in early
2002 when their attempt to buy Acumed was rebuffed, and
their misconduct continued even after the verdict. Acumed,
however, brought this action shortly after Defendants first
marketed the T2 nail. Defendants launched the T2 nail in
early 2004 and Acumed filed this action in April 2004. The
case came to trial without undue delay. Defendants’
infringement, therefore, did not continue for an excessive
length of time.
Accordingly, the Court concludes this factor does not
weigh in favor of enhancement of damages.
64a
Appendix H
7. Remedial Action by Defendants
Acumed argues enhancement of damages is warranted
because Defendants did not immediately remove the T2 nail
from the market after the jury’s verdict in September 2005.
Defendants, however, have disputed the jury’s findings and
filed timely post-trial motions to contest the verdict. Due to
the numerous post-trial motions, the Court did not enter an
injunction until February 23, 2006. Moreover, the Federal
Circuit now has stayed the injunction pending Defendants’
appeal.
The Court concludes Defendants’ actions in vigorously
pursuing its right to contest the verdict do not support
enhancement of damages.
8. Defendants’ Motivation for Harm
There is evidence in the record from which a rational
juror could conclude Defendants set out on a deliberate course
to eliminate their competition after Defendants were unable
to buy Acumed outright. This evidence includes statements
by Stryker that it planned to “attack competitors,” to
“eliminate the Polarus,” and to “target existing Polarus
accounts.” In addition, Acumed argues Rosemary Buckle,
M.D., an orthopaedic surgeon and Stryker’s medical
consultant, deliberately decided not to use the Polarus cap
screw to prevent screw back-out because she wanted to
bolster the evidence that the Polarus nail had problems and,
thereby, to create a demand for the T2 nail. Acumed
essentially accuses Dr. Buckle of jeopardizing the health of
her patients in order to prove the Polarus had problems.
65a
Appendix H
The Court finds the record does not support this
accusation, and, therefore, the Court does not consider this
argument in reaching its conclusion. The Court, however,
concludes the evidence of Defendants’ apparent goal of
eliminating Acumed in combination with Defendants’ size
and financial condition relative to Acumed weighs in favor
of enhancement of damages.
9. Defendants’ Concealment of Their
Infringement
Acumed argues Defendants attempted to conceal their
infringement by failing to supplement their discovery
responses regarding Stryker’s launch of the T2 Long nail and
by asserting various positions at trial. The Court, however,
does not find Acumed’s arguments persuasive. Acumed made
a tactical decision early in this case not to include any claims
based on the T2 Long nail. Moreover, the record does not
establish Defendants took any extraordinary steps to conceal
their infringement of the 444 Patent. The Court, therefore,
finds this factor does not weigh in favor of enhancement.
In summary, the Court is persuaded that factors 1, 4, 5,
and 8, together with the jury’s finding of willfulness in this
factually contested case, support a fifty-percent enhancement
of Acumed’s damages. Although Defendants’ infringement
was willful, the Court finds their conduct was not so
egregious as to warrant trebling of the damages. The jury
awarded Acumed $458,853. The total enhanced award,
therefore, is $688,280.
66a
Appendix H
B. Prejudgment Interest
Acumed also asks the Court to award prejudgment
interest on the jury’s damages award. Defendants do not
oppose this request.
Prejudgment interest ordinarily is awarded to ensure that
damages are adequate to compensate the patentee for
infringement. Stickle v. Heublein, Inc., 716 F.2d 1550, 1564
(Fed.Cir.1983). The court has “wide latitude in the selection
of interest rates ... and may award interest at or above the
prime rate.” Uniroyal, Inc. v. Rudkin- Wiley Corp., 939 F.2d
1540, 1545 (Fed.Cir.1991) (citations omitted). Prejudgment
interest is awarded only on the actual-damage award and not
on the enhanced portion. Underwater Devices, Inc. v.
Morrison-Knudsen Co., Inc., 717 F.2d 1380, 1389
(Fed.Cir. 1983).
The Court finds, and the parties agree, Acumed is entitled
to prejudgment interest from September 20, 2005, through
the date of judgment at the United States Treasury Bond rate.
Accordingly, prejudgment interest through April 17,
2006, equals $20,517.
67a
Appendix H
CONCLUSION
For these reasons, the Court GRANTS in part and
DENIES in part Acumed’s Motion for Treble Damages and
Prejudgment Interest Pursuant to 28 U.S.C. § 284 (#163).
The Court awards Acumed a fifty-percent enhancement of
the damages determined by the jury for a total of $688,280.
In addition, the Court awards Acumed prejudgment interest
in the amount of $20,517.
The Court directs Acumed’s counsel to submit an
appropriate form of judgment.
IT IS SO ORDERED.
DATED this 17" day of April, 2006.
/s/ Anna J. Brown
ANNA J. BROWN
Untied States District Judge
68a
APPENDIX I — OPINION AND ORDER OF THE
UNITED STATES DISTRICT COURT FOR THE
DISTRICT OF OREGON
DATED SEPTEMBER 12, 2006
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF OREGON
04-CV-0513-BR
ACUMED LLC, a Delaware limited liability company,
Plaintiff,
v.
STRYKER CORPORATION, Stryker Sales Corporation,
Stryker Orthopaedics, and Howmedica Osteonics Corp.,
Defendants.
OPINION AND ORDER
BROWN, J.
This matter comes before the Court on Plaintiff Acumed
LLC’s Petition for Attorneys’ Fees (# 203) and Request for
Costs (# 202).
For the reasons that follow, the Court DENIES Plaintiff s
Petition for Attorneys’ Fees, but awards costs to Plaintiff in
the amount of $30,953.10.
69a
Appendix I
PROCEDURAL BACKGROUND
In April 2004, Plaintiff brought this action against
Defendants for infringement of United States Patent No.
5,472,444 (‘444 Patent). The ‘444 Patent describes a humeral
nail used for the treatment of bone fractures, specifically for
the fixation of fractures of the proximal humeral cortex.
Plaintiff manufactures and sells patented humeral nails under
the names Polarus and Polarus Plus. Plaintiff alleged
Defendants infringed the ‘444 Patent by manufacturing,
using, selling, importing, and offering for sale their T2
Proximal Humeral Nail.
The case was tried to a jury on September 13-20, 2005.
On September 20, 2005, the jury found in favor of Plaintiff.
In response to special verdict questions, the jury found the
‘444 Patent was valid and that Defendants willfully infringed
Claims 1, 3-5, 10, 11, and 14-17 of the ‘444 Patent. The jury
awarded Plaintiff damages in the form of lost profits in the
amount of $419,683.00 and a reasonable royalty in the
amount of $39,170.00.
On February 22, 2006, the Court heard oral argument
on, among other things, Plaintiff’s Motion for Treble
Damages and Prejudgment Interest Pursuant to 28 U.S.C.
§ 284. On April 17, 2006, the Court issued an Opinion and
Order in which it granted in part and denied in part Plaintiff’s
Motion. The Court declined to award Plaintiff treble
damages, but it awarded Plaintiff a fifty-percent enhancement
of the damages awarded by the jury.
70a
Appendix I
On May 2, 2006, Plaintiff filed a Petition for Attorneys’
Fees requesting $991,005.00 in attorneys’ fees pursuant to
35 U.S.C. § 285. Defendants objected to these fees for a
number of reasons. The Court granted Plaintiff's request to
file a Reply and provided Defendants with an opportunity to
file a Surresponse.
PLAINTIFF’S PETITION FOR ATTORNEYS’ FEES
Standards
35 U.S.C. § 285 provides: “The court in exceptional
cases may award reasonable attorney fees to the prevailing
party” in a patent case. “The determination of whether a case
is exceptional and, thus, eligible for an award of attorney
fees under § 285 is a two-step process.” Cybor Corp. v. FAS
Tech., Inc., 138 F.3d 1448, 1460 (Fed.Cir.1998) (citation
omitted). The court first must determine whether a case is
exceptional, which is “a factual determination” reviewed by
the Federal Circuit for clear error. /d. (citation omitted). If
the court determines a case is exceptional, the court “must
determine whether attorney fees are appropriate, a
determination that [the Federal Circuit would] review for an
abuse of discretion.” /d. (citation omitted). A district court
abuses its discretion if “its decision is based on clearly
erroneous findings of fact, is based on erroneous
interpretations of the law, or is clearly unreasonable, arbitrary
or fanciful.” Jd. (citation omitted).
“Findings of exceptional case have been based on a
variety of factors; for example, willful or intentional
infringement, inequitable conduct before the Patent and
Tila
Appendix I
Trademark Office, vexatious or unjustified litigation, or other
misfeasant behavior.” Multiform Desiccants, Inc. v. Medzam,
Ltd., 133 F.3d 1473, 1481-82 (Fed.Cir.1998). If a court
declines to award the prevailing party its attorneys’ fees, the
court must explain why the case is not exceptional within
the meaning of § 285. Modine Mfg. Co. v. Allen Group, Inc.,
971 F.2d 538, 543 (Fed.Cir. 1990)
Discussion
Plaintiff argues the Court should find this case is
“exceptional” and should award attorneys’ fees on the ground
that the jury found Defendants willfully infringed the ‘444
Patent. In addition, the Court, in its Opinion and Order
allowing Plaintiff enhanced damages, concluded Defendants
deliberately copied Plaintiff's device and that a rational juror
could conclude Defendants “set out on a deliberate course
to eliminate their competition” (.e., Plaintiff). Defendants,
on the other hand, contend this case is not “exceptional,”
and, therefore, the Court should not award attorneys’ fees to
Plaintiff.
“A finding of willful infringement does not require a
finding that a case is exceptional.” Cybor, 138 F.3d at 1461.
Allowance of fees only in exceptional cases is
based on the premise that courts should attempt
to strike a balance between the interest of the
patentee in protecting his statutory rights and the
interest of the public in confining such rights to
their legal limits.
72a
Appendix I
S.C. Johnson & Son, Inc. v. Carter-Wallace, Inc., 781 F.2d
198, 200 (Fed.Cir.1986)(quoting Mach. Corp. of Am. v.
Gullfiber AB, 774 F.2d 467, 471 (Fed.Cir.1985)).
In addition, “[e]ven an exceptional case does not require
in all circumstances the award of attorney fees.” /d. at 201.
See also Nat’l Preston Indus., Inc. v. West Bend Co., 76 F.3d
1185, 1197 (Fed.Cir.1996) (“the award of attorney fees [on
a finding of willful infringement] is not automatic, even for
the extraordinary case.”). “The trial judge’s discretion in the
award of attorney fees permits the judge to weigh intangible
as well as tangible factors: the degree of culpability of the
infringer, the closeness of the question, [or] ligation
behavior.” Nat’l Preston Indus., 76 F.3d at 1197.
Here the jury found Defendants’ infringement was
willful, and, in addition, the Court concluded Defendants
deliberately copied Plaintiffs device and that a rational juror
could conclude Defendants “set out on a deliberate course
to eliminate their competition.” Accordingly, the Court
concludes this is an “exceptional” case within the meaning
of § 285.
In the exercise of its discretion, however, the Court, also
concludes an award of attorneys’ fees is not appropriate even
if this is an exceptional case. Although the Court awarded
Plaintiff enhanced damages under 35 U.S.C. § 284, the
Court’s evaluation under § 285 differs from its analysis under
§ 284; i.e., the Court may reach different conclusions on the
issues of enhanced damages and attorneys’ fees. See S.C.
Johnson, 781 F.2d at 201-02.
73a
Appendix I
As the Court concluded in its decision on enhanced
damages:
[T]he issues of infringement and willfulness [in
this case] presented classic jury questions. The
evidence did not overwhelmingly favor either
side, and the jury could have rejected Acumed’s
claims. In other words, this was a close case on
many issues, including the willfulness of
Defendants’ infringement.
Accordingly, the Court finds enhancement of
damages based on this factor would result in
punishing Defendants for going to trial and
seeking to prove legitimate defenses. The Court
concludes, therefore, this factor weighs against
enhancement of damages.
When “the evidence of willful infringement is ‘sufficient but
weak,” a court may be justified in not awarding attorney fees.”
Atmel Corp. v. Silicon Storage Tech., Inc., 202 F.Supp.2d
1096, 1108 (N.D.Cal.2002)(citing Cybor, 138 F.3d at 1460).
Here the issue of willfulness was a close one. In addition,
the Court was not persuaded Defendants’ conduct during
litigation was in bad fajth, and the Court remains unpersuaded
that Defendants’ conduct during litigation was sufficiently
egregious to warrant an award of attorneys’ fees. Defendants
in this matter may have been stubborn and unsuccessful, but,
considering the totality of the circumstances and in the
exercise of its discretion, the Court concludes attorneys’ fees
are not appropriate in this case. Accordingly, the Court denies
Plaintiff's Petition for Attorneys’ Fees.
~.
™
74a
Appendix I
PLAINTIFF’S PETITION FOR COSTS
Standards
Absent a showing of circumstances not relevant here,
an award of costs generally is governed by federal law. See
In re Merrill Lynch Relocation Mgt., Inc., 812 F.2d 1116,
1120 n.2 (9 Cir.1987)(dictum). Accordingly, the Court finds
federal law governs the award of costs in this case.
28 U.S.C. § 1920 allows a federal court to tax specific
items as costs against a losing party pursuant to Federal Rule
of Civil Procedure 54(d)(1). Section 1920 provides:
A judge or clerk of any court of the United States
may tax as costs the following:
(1) Fees of the clerk and marshal;
(2) Fees of the court reporter for all or any part
of the stenographic transcript necessarily obtained
for use in the case;
(3) Fees and disbursements for printing and
witnesses;
(4) Fees for exemplification and copies of papers
necessarily obtained for use in the case;
(5S) Docket fees under section 1923 of this title;
75a
Appendix I
(6) Compensation for court-appointed experts,
compensation of interpreters, and salaries, fees,
expenses, and costs of special interpretation
services under § 1828 of this title.
A bill of costs shall be filed in the case and, upon
allowance, included in the judgment or decree.
The court has broad discretion to allow or to disallow a
prevailing party to recoup costs of litigation. The court,
however, may not tax costs beyond those authorized by
§ 1920. Frederick v. City of Portland, 162 F.R.D. 139, 142
(D.Or.1995).
Discussion
Plaintiff seeks costs in the amount of $55,456.19 for
items such as copying costs, deposition transcripts,
deposition videos, court reporter fees, service fees, filing fees,
and the cost of demonstrative exhibits. Defendants object to
many of Plaintiff's requested costs.
I. Copying Costs
Defendants object to Plaintiff's request for $20,029.97
in copying costs on the ground that Plaintiff has not
established any of its copying costs were reasonably
necessary.
1. A summary of the disallowed costs is attached as Exhibit |
to this Opinion and Order.
76a
Appendix I
Section 1920 does not contemplate an award of costs
incurred for in-house copying expenses. See Frederick v. City
of Portland, 162 F.R.D. 139, 142 (D.Or.1995)(“[T]he balance
of defendants’ request [for costs] is inappropriate as it
represents costs associated with the in-house photocopying
of defense counsel.”). See also Voight v. Subaru-Isuzu
Automotive, Inc., 141 F.R.D. 99, 103 (N.D.II1.1992)
(“Photocopying charges attributable to discovery and the
court’s copies of pleading, motions and memoranda are
‘reasonably necessary for use in the case’ and can be awarded.
However, extra copies of file papers and correspondence,
and copies of cases are not necessary, but are for the
convenience of the attorneys and are therefore not taxable.”’).
Extra copies of documents for deposition and witness
preparation are in-house copies made for the convenience of
the attorneys and, therefore, these costs are not taxable. In
contrast, “charges for exhibits and documents submitted to
the court in support of motions, as well as copies of pleadings,
motions and memoranda provided to the court are ...
recoverable.” Grady v. Bunzl Packaging Supply Co., 161
F.R.D. 477, 479 (N.D.Ga.1995).
Plaintiff did not provide sufficient descriptions of its
copying costs to enable the Court to determine whether
Plaintiff's costs are for copies made for distribution to the
Court, copies made to exchange with Plaintiff, or copies made
for third parties. The Court, therefore, is unable to determine
whether copying costs are allowable under § 1920.
Accordingly, the Court declines to award copying costs to
Plaintiff.
77a
Appendix I
II. Deposition Costs
Defendants object to five categories of Plaintiff’s
requested deposition costs: videotaping services, condensed
transcripts and/or ASCII transcripts, Realtime transcript
services, multiple copies of transcripts, and shipping/delivery
handling services.
A. Videotaping Services
Defendants object to Plaintiff's request for $7,250.03
for videotaped deposition services on the grounds that these
video depositions were not used at trial and the standard
transcript copies were available.
Costs related to depositions are generally available to
the prevailing party. Wash. State Dep’t of Transp. v. Wash.
Natural Gas Co., 59 F.3d 793, 806 (9th Cir.1995). Fees
incurred for obtaining deposition transcripts may be
recovered under 28 U.S.C. § 1920(2). Ass’n of Flight
Attendants, AFL CIO v. Horizon Air Indus., Inc., 976 F.2d
541,551 (9th Cir. 1992). A deposition need not be absolutely
indispensable to justify an award of costs, but it must be
“reasonably necessary at the time it was taken, without regard
to later developments that may eventually render the
deposition unneeded at the time of trial or summary
disposition.” Frederick, 162 F.R.D. at 143.
There is not any evidence that these videotaped
depositions were unnecessary at the time they were taken.
Accordingly, the Court awards Plaintiff $7,250.03 for these
costs.
78a
Appendix I
B. Condensed Transcripts and/or ASCII Transcripts
Plaintiff contends it did not include any condensed
deposition fees or ASCII disc charges in its Petition. As
Defendants note, however, it appears Plaintiff included
charges in the amount of $65.00.
Based on Plaintiff's representation in its Petition, the
Court assumes Plaintiff did not intend to include these costs
and declines to award Plaintiff $65.00 for these costs.
C. Realtime Transcript Services
Defendants object to Plaintiff’s request for $984.75 for
“Realtime feed rough draft transcript[{s]” for three
depositions.
Section 1920(2) provides for the taxation of fees of the
“court reporter for all or any part of the stenographic
transcript necessarily obtained for use in the case.” Courts
have considered several factors when determining whether
to allow recovery of the cost of daily transcripts:
(1) the length of the trial and the complexity of
the issues, (2) whether a daily transcript was
necessary to minimize disagreement over the
testimony of witnesses, (3) whether proposed
findings of fact were required, (4) whether the case
involved expert witnesses whose cross-
examination required knowledge of the exact
wording of their previous testimony or that of any
79a
Appendix I
other witness, (5) the size of the claim, and (5)
[sic] the importance of witness credibility.
Ernst v. Anderson, No. 02 C 4884, 2006 WL 163024, at *2
(N.D.Il. Jan. 18, 2006). These factors carry less weight in
the context of depositions than in the context of a trial where
time is tight and resources are often stretched thin. Although
this case was complicated, involved expert witnesses, and
included large claims, the Realtime transcript costs are for
deposition transcripts rather than trial transcripts. There is
not any evidence that Plaintiffs were so pressed for time that
the immediacy of these transcripts was reasonably necessary
nor that the standard form of deposition transcripts would
have been unsuitable.
Accordingly, the Court declines to award Plaintiff
$984.75 for Realtime deposition transcripts.
D. Miultiple Copies of Transcripts
Defendants object to Plaintiff’s request for $349.62 for
six additional copies of the Huebner deposition transcript. It
is unclear why Plaintiff needed six additional copies of this
deposition. Accordingly, the Court declines to award Plaintiff
$349.62 for the additional copies of the Huebner deposition.
E. Shipping and Delivery Costs
Defendants object to Plaintiff's request for $211.00 for
costs of “delivery/shipping and handling” services. Section
1920 does not provide for an award of costs for shipping or
delivery-handling services. See Frederick, 162 F.R.D. at 146
80a
Appendix I
(delivery charges “are not mentioned in § 1920 and are
routinely excluded as taxable costs.”).
Accordingly, the Court declines to award Plaintiff
$211.00 for delivery/shipping and handling services.
III. Demonstrative Exhibits
Defendants object in part to Plaintiff’s request for
$4,629.25 for “[cJolor charts and copies of exhibits used
during Markman hearing, including enlarged boards.”
Specifically, Defendants object to $2,293.75 for designing
the charts and copies and $569.00 for overnight shipping of
the demonstrative exhibits.
Section 1920 does not contain any provision allowing
costs for designing demonstrative exhibits to be shifted from
the prevailing party. Accordingly, the Court declines to award
Plaintiff $2,293.75 for the design of demonstrative exhibits.
As noted, delivery charges “are not mentioned in § 1920
and are routinely excluded as taxable costs.” Frederick, 162
F.R.D. at 146. In addition, Plaintiff does not provide any
explanation as to the reason the exhibits had to be shipped
overnight. Accordingly, the Court declines to award Plaintiff
$569.00 for overnight shipping of the demonstrative exhibits.
8la
Appendix I
CONCLUSION
For these reasons, the Court DENIES Plaintiff’s Petition
for Attorneys’ Fees (# 203) and AWARDS costs to Plaintiff
in the amount of $30,953.10.
IT IS SO ORDERED.
DATED this 12" day of September, 2006.
/s/ Anna J. Brown
ANNA J. BROWN
Untied States District Judge
82a
Appendix I
Exhibit |
Accumed y. Stryker
04-CV-513
Cost Bill
Type of Cost Disallowed
Copying Costs 20,029.97
Videotaping .0O
ASCII Transcripts 65.00
Realtime Transcripts 984.75
Multiple Copies 349.62
Shipping/Delivery 211.00
Demorstratives 2,862.75
Total Disallowed 24,503.09
Total Requested 55,456.19
Total Allowed Costs 30,953.10
83a
APPENDIX J — STATUTE INVOLVED
35 U.S.C. § 112. Specification
The specification shall contain a written
description of the invention, and of the manner
and process of making and using it, in such full,
clear, concise, and exact terms as to enable any
person skilled in the art to which it pertains, or
with which it is most nearly connected, to make
and use the same, and shall set forth the best mode
contemplated by the inventor of carrying out his
invention.
The specification shall conclude with one or more
claims particularly pointing out and distinctly
claiming the subject matter which the applicant
regards as his invention.
A claim may be written in independent or, if the
nature of the case admits, in dependent or multiple
dependent form.
Subject to the following paragraph, a claim in
dependent form shall contain a reference to a
claim previously set forth and then specify a
further limitation of the subject matter claimed.
A claim in dependent form shall be construed to
incorporate by reference all the limitations of the
claim to which it refers.
84a
Appendix J
A claim in multiple dependent form shall contain
a reference, in the alternative only, to more than
one claim previously set forth and then specify a
further limitation of the subject matter claimed.
A multiple dependent claim shall not serve as a
basis for any other multiple dependent claim. A
multiple dependent claim shall be construed to
incorporate by reference all the limitations of the
particular claim in relation to which it is being
considered.
An element in a claim for a combination may be
expressed as a means or step for performing a
specified function without the recital of structure,
material, or acts in support thereof, and such claim
shall be construed to cover the corresponding
structure, material, or acts described in the
specification and equivalents thereof.
85a
APPENDIX K — CONSTITUTIONAL
PROVISION INVOLVED
U.S. Constitution, Article 1, Section 8, cl. 8
Article I
* * *
Section 8. The Congress shallhave power * * *
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;
* * * *
This is a copy of a public record, reproduced as it was published. It is not legal advice, and it may not be the version a court would rely on. Check the official source before you cite it.