Petition for Writ of Certiorari — Stryker Corp. Corp. v. Trimed, Inc. (No. 07-1537)

: =

cuprems Court, U.S.

prem Court, U.S

(\" 071537 JUN 08 2008

No. 07- 0 OFFICE OF THE CLERK

IN THE

Supreme Court of the United States

STRYKER CORPORATION,

Petitioner,

v.

TRIMED, INCORPORATED,

Respondent.

On PETITION FOR A WRIT OF CERTIORARI TO THE

UNITED STATES Court OF APPEALS

FOR THE FEDERAL CIRCUIT

PETITION FOR A WRIT OF CERTIORARI

GREGORY J. VOGLER

Counsel of Record

RoBeRT A. SURRETTE

McAnprews, HELD & Ma.boy, LTp.

500 West Madison Street

Suite 3400

Chicago, IL 60661

(312) 775-8000

Attorneys for Petitioner

216247 g

CUUNDSEL PRESS

$00) 274-3321 © (800) 359-6859

z

QUESTIONS PRESENTED

1. Whether the Federal Circuit has eroded the

public notice function served through a patent’s

prosecution history by disregarding a patent applicant’s

concessions concerning a patent claim feature in a

bargained-for-agreement with the United States Patent

and Trademark Office where a) the Patent Office

Examiner stated in the written record that “[a]zreement

was reached that the expression of this feature in a

means plus function format and better defining the holes

of the plate would distinguish over the prior art of

record” to allow the patent, b) the patent applicant then

rewrote the claim language in the agreed-to “means plus

function format” and secured issuance of the patent, but

c) the Federal Circuit held that the claim language was

not a “means plus function” element under 35 U.S.C.

§ 112, 16, thereby allowing the patent owner to escape

summary judgment of non-infringement and depriving

the public of the ability to rely on the patent’s

prosecution history in evaluating the metes and bounds

of patent claims.

2. Whether the Federal Circuit erred in its statutory

construction of 35 U.S.C. § 112, 16, as it has erred over

a long period of time, by invoking a judicially-created

exception to the statutory mandate of 35 U.S.C. § 112,

{1 6, where the Federal Circuit avoids construing a claim

element written in “means for performing a specified

function” language under the statute which, in contrast

and without any listed exceptions, states that a claim

element “expressed as a means ... for performing a

specified function without the recital of structure,

material or acts .. . shall be construed to cover the

corresponding structure, material or acts described in

the specification and equivalents thereof.”

uv

RULE 14.1(b) AND 29.6 STATEMENT

Pursuant to Supreme Court Rule 14.1(b), Petitioner

Stryker Corporation (“Petitioner”) states that all parties

to the proceedings below appear in the caption of the

case on the cover page.

Pursuant to Supreme Court Rule 29.6, Petitioner

states that no publicly traded company owns 10 percent

or more of Stryker Corporation.

lit

TABLE OF CONTENTS

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

RULE 14.1(b) AND 29.6 STATEMENT .......

py) ee ey yy

TABLE OF CITEDAUTHORITIES .........

SoS pe Et) rr

Pog fs! , ne re aera

STATUTORY PROVISIONS INVOLVED .....

STATEMENT OF THE CASE ...............

The Technology at Issue ..............00%.

The Prosecution History ........s5cesscees

The District Court’s Rulings ...............

The Federal Circuit’s Disposition ...........

Page

iv

Contents

REASONS FOR GRANTING THE PETITION

IT.

THE FEDERAL CIRCUIT'S STATUTORY

CONSTRUCTION IS CONTRARY TO

THIS COURT’S PRECEDENT ........

A.

The Federal Circuit’s Interpretation

Of § 112, f 6 Resurrects The

Problems Identified By This Court In

SI on ke x Ores re ees

Using A Judicially-Created Presumption

To Allow Judicial Exceptions To The

Mandate of 35 U.S.C. § 112, 16 Violates

Basic Principles of Statutory

| Ter Er eee

THE FEDERAL CIRCUIT CREATED

AN

INTRA-CIRCUIT SPLIT

REGARDING THE PUBLIC NOTICE

FUNCTION OF A_ PATENT’S

PROSECUTION HISTORY ...........

Se eer er ee rer ry eer

Contents

APPENDIX

Appendix A: Opinion Of The United States

Court Of Appeals For The Federal Circuit

Decided January 29, 2008 .................

Appendix B: Joint Stipulation Of The United

States District Court For The Central District

Of California, Western Division Dated And

Ue I BET nn ne scwewdacasessues

Appendix C: Minutes Of Proceedings Of The

United States District Court For The Central

District Of California Dated March 19, 2007

oe*ee eevee eeseeeeeeaeeeeweeeeeeeeereeeeseeveeeeeeeseee

Appendix D: Judgment Of The United States

District Court For The Central District Of

California, Western Division Dated And Filed

RI SE oie cnc ka ew ew odes

Appendix E: Statement Of Uncontroverted

Facts And Conclusions Of Law In Support Of

Stryker’s Motion For Summary Judgment Of

Noninfringement Of The ‘839 Patent Signed

By Hon. Manuel L. Real on March 19, 2007 ...

Appendix F: Order Of The United States

District Court For The Central District Of

California, Western Division Dated And Filed

UN i EE 5. 9 0d wc a ace ee en a a

Page

20a

vi

Contents

Appendix G: Order Of The United States Court

Of Appeals For The Federal Circuit Denying

Petition For Rehearing And Petition For

Rehearing En Banc Filed March 10, 2008 ...

Appendix H: 35 U.S.C.§ 112,976 .............

SUPPLEMENTAL APPENDIX

United States Patent No. 5,931,839 ...........

Interview Summary Between United States

Patent And Trademark Office Examiner And

Applicant And His Counsel Dated August 17,

ia Dewi on cateda pasa cakeu ee ox a wes

First Amendment After Final Rejection For

United States Application No. 08/590,918

Dated September 1, 1998 ..................

Page

vii

TABLE OF CITED AUTHORITIES

Page

CASES

Altiris, Inc. v. Symantec Corp.,

318 F.3d 1363 (Fed. Cir. 2003) .............. 19

Am. Capital Corp. v. Fed. Deposit Ins. Corp.,

472 F. 3d 859 (Fed. Cir. 2006) ............... 3]

Biomedino, LLC v. Water Techs, Corp.,

490 F.3d 946 (Fed. Cir. 2007) ........... 3-4, 14, 19

Chimie v. PPG Indus., Inc.,

402 F.8a 1971 (Fed. Cir. 2005) .............. 29

Cole v. Kimberly-Clark Corp.,

102 F.3d 524 (Fed. Cir. 1996) ........... 20, 28, 29

Eli Lilly & Co. v. Medtronic, Inc.,

re es ee CD ork oo vo vibe ee nese erences 25

Festo Corp. v. Shoketsu Kinzoku Kogyo

Kabushiki Co.,

te TU I ono oe ss cecsaewn cn denus 6, 30

Front Row Theatre, Inc.

v. Am. Mfr. Mutual Ins. Cos.,

16 Five hoee Coen Car, W9GE) jw nn ccc es sees 16, 31

Gen. Elec. Co. v. Wabash Appliance Corp.,

Be We A OUD ke kb vdeo aseeesbeideaces 5

Vili

Cited Authorities

Page

Greenberg v. Ethicon Endo-Surgery, Inc.,

91 F.3d 1580 (Fed. Cir. 1996) ............... 14

Halliburton Oil Well Cementing Co. v. Walker,

Se Ses. Fe ki Se © bk 64 6 passim

Laitram Corp. v. Rexnord, Inc.,

939 F.2d 15838 (Fed. Cir. 1991) ............. 14, 24

Lexecon, Inc. v. Milberg Weiss Bershad

Hynes & Lerach,

ee SA SI dice 0.5 da vo Ged been eees 24

Markman v. Westview Instruments, Inc.,

Se Rh EE ha Ske LONG ok See dues 28

MediaCom Corp. v. Rates Tech. Inc.,

4 F. Supp. 2d 17 (D. Mass. 1998) ............ 20

Merck KGaA v. Integra LifeSciences I, Ltd.,

SOG 43.2. SRR CR a 4s awa cenwsvestecs 25, 26, 27

Overhead Door Corp. v. Chamberlain Group, Inc.,

194 F.'3d 1261 (Fed. Cir. 1999) .............. 20

Sage Prods., Inc. v. Devon Indus., Inc.,

126 F.3d 1420 (Fed. Cir. 1997) ....... 14, 19, 28, 30

Schoenhaus v. Genesco, Inc.,

440 F.3d 1354 (Fed. Cir. 2006) ............. 28, 30

ix

Cited Authorities

Page

Searfoss v. Pioneer Consol. Corp.,

374 F.3d 1142 (Fed. Cir. 2004) .............. 20

Spring Window Fashions LP

v. Novo Indus. L.P,

323 F.3d 989 (Fed. Cir. 2003) .............. 28, 30

Turbocare Div. of Demag Delaval

Turbomachinery Corp. v. Gen. Elec., Co.,

264 F.3d 1111 (Fed. Cir. 2001) .......... rae

Unidynamics Corp.

v. Automatic Prods., Int'l, Ltd.,

157 F.3d 1311 (Fed. Cir. 1998) .............. 19

United States v. Am. Surety Co.,

Ee 31

United States v. Joseph A. Holpuch Co.,

Ee 15-16, 31

United States v. Rutherford,

OPED oc sc scssecesecsccvenes 24, 25

Valmont Indus., Inc. v. Reinke Mfg. Co.,

983 F.2d 1039 (Fed. Cir. 1993) .............. 18

Vitronics Corp. v. Conceptronic, Inc.,

90 Fad 1576 (Fed. Cir. 1996) ............00. 6, 29

x

Cited Authorities

Page

Warner-Jenkinson Co.

v. Hilton Davis Chem. Co.,

ee ee Oe PES cdbeasestdscesesceveses 17, 18

York Prods., Inc. v. Central Tractor

Farm & Family Ctr,

99 F3d 1568 (Fed. Cir. 1996) ............... 14

STATUTES

Be Ras EE 6 v ce dc as ees 40005 ebesebeean 1

Be tae OEE) cc vceceewseneseenecuews 1

ee ee eins eae Cea 1, 11

ee Sa nk ke ixdakivcoenuseuek ve leetaan 1, 11

ee as Oe eo 54 ha eee eae veeses passim

OP UR BRT) 6 cs ded er scavevceseens 25, 26, 27

xi

Cited Authorities

Page

MISCELLANEOUS

Kimberly A. Moore et al., Patent Litigation And

Strategy (2d ed. BOOS) .....ccccsceveess wees

Kimberly A. Moore, Markman Hight Years Later:

Is Claim Construction More Predictable?,

9 Lewis & Clark L. Rev. 231 (2005) ........ 15, 25

William F. Lee & Eugene M. Paige, Means Plus

and Step Plus Function Claims: Do We Only

Know Them When We See Them?, 80 J. Pat.

& Trademark Off. Soc’y 251 (1998) ...... 14, 15, 24

1

Stryker Corporation (“Petitioner”) hereby petitions

for a writ of certiorari to review the judgment of the

United States Court of Appeals for the Federal Circuit.

OPINIONS BELOW

The opinion and order of the United States District

Court for the Central District of California (“District

Court”) granting summary judgment in favor of

Petitioner is unreported and is set forth in the Appendix

(“App.”) at 18a-39a. The opinion and order of the United

States Court of Appeals for the Federal Circuit

reversing the judgment of the District Court is reported

at 514 F.3d 1256 and is also set forth at App. la-13a.

The Federal Circuit’s order denying rehearing en banc

is unreported and is reproduced at App. 43a-44a.

JURISDICTION

The District Court had jurisdiction to hear TriMed,

Incorporated’s (“Respondent”) complaint pursuant to

28 U.S.C. §§ 1331 and 1338. The Federal Circuit had

jurisdiction to hear Respondent’s appeal pursuant to

28 U.S.C. § 1295(a)(1). The Federal Circuit rendered its

decision on January 29, 2008. Petitioner filed a timely

petition for rehearing en banc by the Federal Circuit,

which was denied on March 10, 2908. This Court’s

jurisdiction, under 28 U.S.C. § 1254(1), is thus timely

invoked.

yA

STATUTORY PROVISIONS INVOLVED

This case concerns the proper interpretation of a

patent claim element written as a means for performing

a specified function, otherwise known as means-plus-

function format. Section 112, paragraph 6 of Title 35

of the United States Code governs the proper

interpretation of elements written in means-plus-

function format in a patent claim. It provides:

An element in a claim for a combination may

be expressed as a means or a 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.

STATEMENT OF THE CASE

This case raises important questions regarding two

critical aspects of claim construction in patent law. First,

this case raises a vital question regarding the public

notice function served by a patent’s prosecution history.

May a court simply dismiss a patent’s prosecution

history when an applicant, to obtain the patent, makes

an agreement with the United States Patent and

Trademark Office (“Patent Office”) regarding the scope

and interpretation of a claim element? Second, this case

raises fundamental questions regarding proper

statutory interpretation of a federal statute. In

particular, should a court be allowed to create a judicial

exception to the express mandate of 35 U.S.C. § 112,

3

1 6, and as a result allow a patent owner to broaden

impermissibly its claims during a later-initiated

infringement action?

Perceiving fundamental problems with allowing an

applicant to claim his or her invention using functional

language, in 1946 this Court prohibited the use of

means-plus-function language in patent claims.

See Halliburton Oil Well Cementing Co. v. Walker, 329

U.S. 1, 9-12 (1946). In 1952, however, Congress

addressed this issue with the enactment of 35 U.S.C.

§ 112, 1 6. While Congress determined that applicants

could express their inventions in means-plus-function

format, Congress concurrently attempted to rectify the

indefiniteness problems that previously plagued such

claim language. In particular, to prevent applicants from

claiming their inventions in an impermissibly broad or

ambiguous manner, Congress limited the scope of

means-plus-function claim elements to those structures

(or equivalents) that were recited in the specification

for performing the claimed functions. See 35 U.S.C.

§ 112, 16.

By applying its own judicially-created exception to

this federal statute, the Federal Circuit has eroded the

safeguards put in place by Congress. Because the

Federal Circuit does not apply the claim construction

mandate of 35 U.S.C. § 112, 16 to all claim elements

which invoke “means” language, the statutory

safeguards are not universally applied to all such claim

elements. Specifically, rather than universally apply the

mandate of § 112, 11 6, the Federal Circuit only applies

the statutory framework presumptively. See, e.g.,

Biomedino, LLC v. Water Techs. Corp., 490 F.3d 946,

4

950 (Fed. Cir. 2007). If the Federal Circuit believes that

the claim language recites “sufficient structure,” then

the Federal Circuit interprets the claim language

without reference to the claim construction ma:.date set

forth in § 112, 1 6. Jd. Consequently, just like the pre-

Halliburton era, applicants again are allowed to claim

their inventions with language that is often times overly

broad, indefinite and ambiguous.

This case epitomizes the Federal Circuit’s

problematic approach to means-plus-function claim

elements. Here, Robert Medoff (“the Applicant”) used

the statutory “means for performing a specified

function” language to express a critical claim element.

Moreover, in exchange for receiving a patent monopoly

from the government, the Applicant agreed with the

Patent Office during an interview with the Patent Office

Examiner that the critical aspect of his alleged invention

would be expressed in means-plus-function format.

Supplement Appendix (“Supp. App.”) at SA-7. In other

words, the Applicant agreed that his monopoly would

be limited to the structures described in the

specification, and equivalents thereof, that performed

the claimed functions. The Applicant then proceeded to

amend his patent claim to place expressly the “means

for performing a specified function” language in the

claims of the issued patent. Supp. App. at SA-8-SA-13.

Nevertheless, accepting an argument raised by the

patent owner (Respondent) to escape summary

judgment of non-infringement against it, the Federal

Circuit refused to invoke the statutory mandate of

35 U.S.C. § 112, 16. App. at 6a-10a. Without the

statutory safeguards in place, the Federal Circuit

allowed Respondent to expand its monopoly to include

5

structures not recited in the specification, or equivalents

thereof, for performing the claimed functions.

The Federal Circuit’s refusal to apply consistently

35 U.S.C. § 112, 1 6 results in problematic uncertainty

regarding the scope of a patent’s claims. In many cases,

neither the government, the applicant, nor the public

will know if a claim element will be interpreted narrowly

as a means-plus-function element or broadly not as a

means-plus-function element until the claim language

is subjected to litigation. That litigation may not occur

until years after the patent issues.

This Court, however, recognizes that “[t]he limits

of a patent must be known for the protection of the

patentee, the encouragement of the inventive genius of

others, and the assurance that the subject matter will

be dedicated ultimately to the public.” Gen. Elec. Co. v.

Wabash Appliance Corp., 304 U.S. 364, 369 (1938). This

case provides an excellent vehicle for the Court to

reinforce the paramount importance of enabling the

government, the applicant and most importantly the

public to ascertain predictably the boundaries of a

patent owner’s monopoly. By addressing the proper

statutory construction of 35 U.S.C. § 112, 16, this Court

will provide the Patent Office, tle applicants, the public,

and the lower courts with much needed clarity regarding

the scope of claim elements written with “means for

performing a specified function” language.

This case is a proper vehicle for this Court to address

the role of the prosecution history in claim construction.

A patent, like any other written instrument, should be

interpreted in accordance with the intrinsic evidence.

6

In the context of patents, the intrinsic evidence includes

the claims, the specification, and the prosecution history.

In fact, alongside the claims and the specification, the

prosecution history is a vital tool in claim construction.

See Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki

Co., 535 U.S. 722, 733 (2002) (“Prosecution history estoppel

requires that the claims of a patent be interpreted in light

of the proceedings in the PTO during the application

process. Estoppel is a ‘rule of patent construction’ that

ensures that claims are interpreted by reference to those

‘that have been cancelled or rejected.””); see also Vitronics

Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582-83 (Fed.

Cir. 1996).

The public is entitled to rely on an applicant’s express

statements during patent prosecution when ascertaining

the scope of protection afforded by the patent that

ultimately issues. As a corollary, an applicant ought to be

bound by any representations it made to or agreements it

made with the Patent Office to obtain allowance of the

patent. As such, in this case for example, Respondent

should not be allowed to breach the agreement struck with

the Patent Office in order to avoid a finding of non-

infringement. The straightforward nature of the

prosecution history in this case makes it a proper vehicle

for this Court to address the significance of a patent’s

prosecution history in construing a patent.

The Technology at Issue

The technology at issue in this case is simple and

straightforward. In general, United States Patent No.

5,931,839 (“the ‘839 patent”) relates to the fixation of

broken bones, in particular the fixation of fractures of

the distal radius (the wrist). The technology described

in the ‘839 patent discloses plates with special holes,

screws and pins for fixing broken bones. Pictures of the

plate/screw/pin assembly of the ‘839 patent are shown

in the drawings below, which are taken from the figures

of the ‘839 patent:

Pin Locked

4

AR , Pilate opin plato

O

' Oo

O

, O

‘oe

From Fig. 1 From Fig. 5

of the ‘839 Patent of the ‘839 Patent

As shown in the above drawings, the bone fracture

is shown at 11. The plate 1 is placed over the stable bone

10 and the fractured bone 9. At one end, the plate 1 has

holes 2 for the insertion of screws 7. The screws 7 secure

the plate to the stable bone 10. At the other end of the

plate, there are holes 3 and/or special holes with slots 4

for the insertion of pins 8. The pins 8 slide axially

8

through the holes 3 or the hole/slot combination 4 into

the fractured bone 9, across the fracture 11, and into

the stable bone 10.

As described in the patent, but not shown in the

drawings (other than the hole with a slot), a special hole

has an additional structure to lock the pin to the plate

so that the near end of the pin is stabilized against

displacement in the plane of the plate. These additional

necessary structures include: (1) a hole with a slot; (2) a

threaded hole with threaded pins; (3) a hole with

locking means; (4) an undersized hole with a cut

extending from the hole to the edge of the plate; (5) a

slotted hole joined by a slightly undersized hole; and

(6) a hole used with one or more threaded or slotted

studs. Supp. App. at SA-6.

Claim 1 is the only independent claim of the ‘839

patent. Currently at issue in this case is the construction

of the last element of that claim reproduced in bold

below. In full, claim 1 of the ‘839 patent reads:

An implantable device for fixation of at least

one fractured bone fragment to a stable bone

fragment, said implantable device comprising

an implantable plate having opposite end

portions,

fastening means for securing one end portion

of said plate to stable bone,

at least one fixation pin for penetrating said

at least one fractured bone fragment, and

traversing a fracture for entering the stable

9

bone fragment and for being secured therein

at a stable fixation site at a far end of said

fixation pin,

the opposite, near end of said pin being

adapted for extending from the fractured

bone fragment,

said near end of said pin being engageable in

one of a plurality of holes in the other end

portion of the plate,

said holes in said plate providing means for

allowing the pin to slide axially therein but

preventing compression across the

fracture, and stabilizing said near end of

the pin against displacement in the plane

of the plate.

Supp. App. at SA-6 (emphasis added).

The Prosecution History

The Applicant, Robert Medoff, had a difficult time

obtaining allowance of the ‘839 patent. When the Patent

Office issued a final rejection of the pending claims of

the ‘839 patent, the Applicant requested an interview

with the Patent Office Examiner to discuss the final

rejection of the claims. On August 17, 1998, the Patent

Office Examiner conducted an interview with the

Applicant and his lawyer. As memorialized in the

Interview Summary written by the Patent Office

Examiner, the Patent Office Examiner and the Applicant

agreed that the Applicant could obtain allowance of the

10

claims if the Applicant wrote the last element of claim 1 in

means-plus-function format and better defined the holes

of the plate:

The examiner explained the rejection to the

applicant. Discussion centered around focusing

on the structural difference between the

applicant’s pin/plate attachment and the

conventional screw/plate attachment of the prior

art (as shown for example by Lin). The

configuration of the present device allows the

pin to be attached to the plate in a sliding

manner that prevents compression across the

fracture. Agreement was reached that the

expression of this feature in a means plus

function format and better defining the holes

of the plate would distinguish over the prior

art of record.

Supp. App. at SA-7 (emphasis added).

Subsequently, the Applicant did in fact amend claim 1

of the ‘839 patent to include “means for performing a

specified function” language. Supp. App. at SA-9.

Moreover, the Applicant expressly told the Patent Office

Examiner that the amendment was made “[i]n accordance

with the determinations made at [sic] interview”—7.e., the

determination that the last element of claim 1 was to be

written in means-plus-function format. Supp. App. at

SA-11. The Patent Office allowed the claims of the ‘839

patent in light of the Applicant’s amendment. No fair

reading of this public record could reach any conclusion

other than the one reached by the District Court—the last

claim element of claim 1 is a “means plus function” claim

element subject to 35 U.S.C. § 112, 9 6.

11

The District Court’s Rulings

Respondent TriMed, Incorporated (“Respondent”)

filed the present lawsuit asserting that Petitioner’s

distal radius fracture fixation system allegedly infringes

claims of the ‘839 patent in the United States District

Court for the Central District of California (“District

Court”). The District Court had jurisdiction to hear

Respondent’s case under 28 U.S.C. §§ 1831 and 1338.

Petitioner denied Respondent’s contention and filed

counterclaims seeking a declaratory judgment that

Petitioner’s distal radius fracture fixation system does

not infringe claims of the ‘839 patent and that the claims

of the ‘839 patent are invalid and unenforceable.

Petitioner then moved for summary judgment of

non-infringement. In its motion, Petitioner argued that

under a proper construction of the last element of claim

1—“said holes in said plate providing means for allowing

the pin to slide axially therein but preventing

compression across the fracture, and stabilizing said

near end of the pin against displacement in the plane of

the plate”—the accused products did not infringe.

Petitioner explained that the last element of claim 1 was

a means-plus-function element that required a hole plus

another structure to perform the claimed functions of

(1) allowing the pin to slide axially but preventing

compression across the fracture, and (2) stabilizing the

near end of the pin against displacement in the plane of

the plate. According to the Applicant’s disclosure to the

public in the patent’s specification, the structures for

performing the claimed functions are: (1) a hole with a

slot for “preventing disengagement”; (2) a threaded

hole to engage threaded pins; (3) holes used with

12

locking means, such as a locking nut; (4) an undersized

hole with a cut for holding the pin; (5) a slotted,

undersized hole for locking the pin; and (6) a hole used

with one or more threaded or slotted locking studs.

Supp. App. at SA-6. Because the accused products lack

any additional structure working in combination with a

hole, the accused products could not infringe claim 1 of

the ‘839 patent as a matter of law.

Respondent opposed the summary judgment motion

by arguing, in part, that, contrary to the Applicant’s

“agreement” with the Patent Office, the last element of

claim 1 was not written in means-plus-function format.

As such, Respondent argued that mere holes performed

the claimed functions of allowing the pin to slide axially

and stabilizing the pin to prevent displacement in the

plane of the plate.

The District Court adopted Petitioner’s claim

construction position and determined that the claim

element “said holes in said plate providing means for

[performing two specified functions)” was written in

means-plus-function format. App. at 35a-39a. Thus, this

claim element required a structure in addition to a hole

for performing the claimed functions. Jd. Because the

accused products have only holes, the District Court

granted Petitioner’s motion for summary judgment of

non-infringement. /d.; see also App. at 18a-19a.

13

The Federal Circuit’s Disposition

Respondent appealed the District Court’s grant of

summary judgment of non-infringement to the Federal

Circuit. In doing so, Respondent argued that the last

element of claim 1 was not written in means-plus-

function format and as properly interpreted required

mere holes to perform the claimed functions. The Federal

Circuit agreed. Dismissing both the use of “means for

performing a specified function” language in claim 1 and

the Applicant’s express written “agreement” with the

Patent Office, the Federal Circuit reversed the District

Court’s grant of summary judgment. App. at 7a-lla. In

essence, the Federal Circuit allowed Respondent to

redraft a critical part of the claim—omitting the need

for an additional structure, in combination with the holes,

to perform the claimed functions. Petitioner timely

requested rehearing en banc, which was denied on

March 10, 2008. App. at 43a-44a.

REASONS FOR GRANTING THE PETITION

The Federal Circuit’s decision to apply as only a

rebuttable presumption the statutory mandate

embodied in 35 U.S.C. § 112, 1 6 is contrary to the clear

language of that statute. It conflicts with well-established

principles of statutory interpretation outlined by this

Court.

Congress enacted § 112, 1 6 to allow patent

applicants to define their inventions in terms of

functional language. As a consequence of doing so,

however, the applicant’s patent claims would be limited

to structures, or equivalents, the applicant described

14

in the specification as performing the claimed functions.

35 U.S.C. § 112, 16. This statutory safeguard was put

in place so that both the patent owners and the public

at large would be able to ascertain, on the public record,

the scope of the patent’s protection.

With little fanfare or discussion of the issue, the

Federal Circuit has developed a judicial rule that § 112,

{6 only applies presumptively when the patent applicant

invokes the statutory “means for performing a specified

function” language. Laitram Corp. v. Rexnord, Inc., 939

F.2d 1533, 1536 (Fed. Cir. 1991) (holding that § 112, 116

applies even when the claim recites some structure);

Greenberg v. Ethicon Endo-Surgery, Inc., 91 F.3d 1580,

1584 (Fed. Cir. 1996) (stating that “use of the term

‘means’ (particularly as used in the phrase ‘means for’)

generally invokes section 112(6)...”); York Prods., Inc.

v. Central Tractor Farm & Family Ctr, 99 F.3d 1568,

1574 (Fed. Cir. 1996) (holding that “the use of the word

‘means’ triggers a presumption that the invention used

this term advisedly to invoke the statutory mandates

for means-plus-function clauses”); see also William F. Lee

& Eugene M. Paige, Means Plus and Step Plus

Function Claims: Do We Only Know Them When We

See Them?, 80 J. Pat. & Trademark Off. Soc’y 251, 257-

63 (1998). In particular, under Federal Circuit case law

if “sufficient structure” is recited in the claim element,

the claim element is not interpreted under the statutory

mandate of § 112, 16. See, e.g., Biomedino, 490 F.3d at

950; Sage Prods., Inc. v. Devon Indus., Inc., 126 F.3d

1420, 1427-28 (Fed. Cir. 1997).

15

Over the years, the Federal Circuit’s application of

this statutory provision has generated uncertainty

regarding the scope of any claim element that invokes

the statutory “means for performing a specified

function” language. See, e.g., Kimberly A. Moore,

Markman Eight Years Later: Is Claim Construction

More Predictable?, 9 Lewis & Clark L. Rev. 231, 242-48

(2005) (noting that the Federal Circuit’s means-plus-

function law is difficult to apply and “[t]his may support

adoption of a black letter application standard; namely,

if the term uses the word ‘means,’ it is a means-plus-

function term. ..”); William F. Lee & Eugene M. Paige,

80 J. Pat. & Trademark Off. Soc’y at 252, 266-68 (noting

that “although the broad outlines are now acquiring

some definition, the law of what constitutes a means-

plus-function claim is fraught with uncertainty .. .”).

But, patent owners and the public at large have a critical

need to understand the scope of a patent’s protection

based upon the public written record. Certainty in the

application of 35 U.S.C. § 112, 1 6 would better allow

patent owners to determine if a competitor truly was or

was not infringing. Likewise, knowing whether or not

interpretation under § 112, {1 6 would apply to a claim

element would allow the public to better ascertain what

activity may be an infringement or non-infringement for

business planning purposes.

In this case, the Federal Circuit has generated

greater uncertainty with its decision below by taking a

further step away from § 112, {6 and applying special

rules which ignore Patent Office agreements in the

interpretation of patents. Compare App. at 6a-10a

(rewriting Applicant’s bargained-for-agreement) with

United States v. Joseph A. Holpuch Co., 328 U.S. 234,

16

238-40 (1946) (holding claim for damages barred where

respondent failed to “abide by the appeal provisions of

Article 15 of the contracts” because “[t]o do otherwise

is to rewrite the contract”) and Front Row Theatre, Inc.

v. Am. Mfr. Mutual Ins. Cos., 18 F.3d 1848, 1347 (6th

Cir. 1994) (plaintiff not entitied to insurance coverage

where cause of damage was specifically excluded from

contract). Despite this Court’s pronouncement that

patents are like any other written document, the Federal

Circuit construed Respondent’s patent claims in a

manner directly contrary to how any other court would

interpret written or legal documents. In nullifying the

very agreement that the Applicant made with the Patent

Office in order to obtain allowance of its patent, the

Federal Circuit called into question the very nature of

the patent prosecution process and its public notice

function.

I. THE FEDERAL CIRCUIT’S STATUTORY

CONSTRUCTION IS CONTRARY TO THIS

COURT’S PRECEDENT

Review by this Court is necessary so that this Court

can address the proper statutory interpretation of

35 U.S.C. § 112, 16. The current construction adhered

to by the Federal Circuit impermissibly inserts a

judicially-created exception into the otherwise clear

language of this statutory provision. As currently

interpreted, the mandatory provisions of 35 U.S.C.

§ 112, 16 become merely a rebuttable presumption. The

Federal Circuit’s statutory construction has created

uncertainty regarding the scope of a patent owner’s

rights that needs to be addressed by this Court.

17

A. The Federal Circuit’s Interpretation Of § 112,

1 6 Resurrects The Problems Identified By

This Court In Halliburton

In 1952, Congress enacted Section 112, paragraph

6 as “a targeted cure to a specific problem.” Warner-

Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17,

28 (1997). Specifically, this Court had determined

previously in Halliburton that claim elements

written in “means” or functional language did not meet

the definiteness requirement embodied in § 112.

Halliburton, 329 U.S. at 10. In prohibiting the use of

“means” language, this Court delineated numerous

problems with allowing applicants to claim their alleged

invention with purely functional language. Namely, this

Court was concerned that such claim elements were too

broad and ambiguous to meet the goals of the Patent

Act:

Where the ingredients are all old the

invention . . . consists entirely in the

combination, and the requirement of the

Patent Act that the invention shall be fully and

exactly described applies with as much force

to such an invention as to any other class,

because if not fulfilled all three of the great

ends intended to be accomplished by that

requirement would be defeated. .. . (1.) That

the government may know what they have

granted and what will become public property

when the term of the monopoly expires.

(2.) That licensed persons desiring to practice

the invention may know, during the term, how

to make, construct, and use the invention.

18

(3.) That other inventors may know what part

of the field of invention is unoccupied.

Halliburton, 329 U.S. at 10 (quoting Gill v. Wells, 89

U.S. 1, 25-26 (1874)); see also id. at 12 (“Under these

circumstances the broadness, ambiguity, and

overhanging threat of the functional claim of [the patent-

in-suit] become apparent.”).

In response to Halliburton, Congress enacted § 112,

1 6. See, e.g., Warner-Jenkinson, 520 U.S. at 28. This

new statutory provision allowed patent applicants to use

“means” language in their patent claims. But, to cure

the definiteness problems outlined by this Court,

Congress provided an express mandate regarding the

construction of these claim elements. Under the statute,

an applicant is allowed to claim his or her invention “as

a means or step for performing a specified function,”

but if the applicant does so “such claim shall be

construed to cover the corresponding structure,

material, or acts described in the specification or

equivalents thereof.” 35 U.S.C. § 112, 1 6 (emphasis

added). In other words, “[sJection 112 thus permits

means-plus-function language in a combination claim,

but with a ‘string attached.’ The ‘attached string’ limits

the applicant to the structure, material, or acts in the

specification and their equivalents.” Valmont Indus.,

Inc. v. Reinke Mfg. Co., 983 F:2d 1039, 1042 (Fed. Cir.

1993).

The patent statute is clear and mandatory. If an

applicant writes a claim element in “means for

performing a specified function” language, that claim

element must be interpreted under 35 U.S.C. § 112, 16,

19

2.é., the claim element must be limited to the structures

in the specification (or equivalents) for performing the

claimed functions. Despite this clear mandate, over time

the Federal Circuit has developed a loophole for

applicants dissatisfied with the claims they negotiated

for during patent prosecution. Under the Federal

Circuit’s case law, if an applicant uses the words “means

for” with the recitation of functions to be performed in

the claim element, then 35 U.S.C. § 112, 16 only creates

a rebuttable presumption. See, e.g., Biomedino, 490 F.3d

at 950. If, however, the claim element is written in the

language permitted under § 112, 1 6 but also recites

“sufficient structure,” according to the Federal Circuit

the claim element is no longer interpreted under the

statute. See, e.g., Sage Prods., 126 F.3d at 1427-28.

Unfortunately, what constitutes “sufficient

structure” is often times uncertain, debatable, and open

to subjective determinations. Compare Unidynamics

Corp. v. Automatic Prods., Int'l, Lid., 157 F.3d 13811,

1319 (Fed. Cir. 1998) (interpreting “spring means” as

subject to § 112, 16) with Turbocare Div. of Demag

Delaval Turbomachinery Corp. v. Gen. Elec., Co., 264

F3d 1111, 1120-21 (Fed. Cir. 2001) (declining to interpret

“compression spring means” as subject to § 112, l 6).'

1. For additional examples of the arbitrary and capricious

results stemming from the application of the Federal Circuit’s

judicially-created exception to § 112,16 compare Altiris, In>. v.

Symantec Corp., 318 F.3d 1563, 1375-76 (Fed. Cir. 2003) (finding

insufficient structure in the claim element “means of booting

said digital computer, said means of booting including a first

set of commands, said first set of commands resident un said

storage device .. ., and a second set of commands resident on a

(Cont'd)

20

Moreover, allowing an applicant to escape the ambit of

§ 112, 1 6 can lead to, as in this case, an imperr.issible

broadening of the patent’s scope such that the patent

claims will cover products or processes that patent law

did not contemplate.? Thus, the Federal Circuit has

_-_ -

(Cont’d)

storage device external to said digital computer .. .” in part

because use of “‘including’—an open term—.. . suggests that

the two sets of ‘commands’ are not sufficient structure; rather,

something else is needed”) (emphasis added) with Searfoss v.

Pioneer Consol. Corp., 374 F.3d 1142, 1145-46, 1149 (Fed. Cir.

2004) (finding sufficient structure in the claim element

“actuation means for connecting said tension bail to said

extension assembly . . . said actuation means including first

and second pivot connections . .. and a midpoint on said

respective first and second extension bail legs” despite the

applicant’s use of the open term “including”) (emphasis added)

and compare also Overhead Door Corp. v. Chamberlain Group,

Inc., 194 F.3d 1261, 1272-73 (Fed. Cir. 1999) (“first switch means”

and “memory selection second switch means” do not recite

sufficient structure even though structures in the specification

were merely switches) with MediaCom Corp. v. Rates Tech., I'nc.,

4 F. Supp. 2d 17, 27 (D. Mass. 1998) (“switch means” recites

sufficient structure for performing the claimed functions, 7.e. a

switch). Indeed, when faced with the same exact claim element,

judges of the Federal Circuit cannot even agree on how to apply

their judicially created-exception. See Cole v. Kimberly-Clark

Corp., 102 F.3d 524 (Fed. Cir. 1996) (majority finding

“perforation means” contained a sufficient recital of structure;

dissent finding “perforation” was not a sufficient recital of

structure).

2. This case typifies the broadening effect resulting from

an applicant’s escape of § 112, {1 6. Had the Federal Circuit

properly interpreted the last element of claim 1, Respondent’s

(Cont'd)

21

created the very problems outlined by this Court in

Halliburton. As noted above, the Halliburton Court

warned that use of purely functional claim language

(without the safeguards later enacted by Congress) was

problematic because the government may not know

“what they have granted and what will become public

property when the term of the monopoly expires.”

Halliburton, 329 U.S. at 10. Likewise, licensees will not

know how to practice the invention nor will other

inventors know “what part of the field of invention is

unoccupied.” Jd.

This case exemplifies these very real problems.

Here, the Patent Office expressly agreed with the

Applicant that the last element of ciaim 1 was to be

written in means-plus-function format. Supp. App. at

SA-7. The Applicant, moreover, expressly indicated to

the Patent Office that the claim element was amended

in accordance with the Applicant’s agreement with the

(Cont'd)

patent would have been limited to a plate with a hole plus

another structure that worked in combination with the hole to

allow a pin to slide axially but preventing compression across

the fracture and to stabilize the pin. But, since the Federal

Circuit determined that the last element of claim 1 should not

be interpreted under § 112, 16, Respondent’s patent was

broadened to include all plates with any type of hole that would

allow a pin to slide axially and stabilize the pin against

displacement in the plane of the plate. In other words, the

Federal Circuit allowed Respondent to broaden a critical claim

element, namely eliminating the requisite additional structure

for performing the claimed functions (e.g. a hole with a slot,

threaded hole with threaded pin, a hole with locking means,

etc.). Respondent thereby escaped summary judgment of non-

infringement against it.

22

Patent Office. Supp. App. at SA-11. Thus, when the ‘839

patent issued, the Patent Office and competitors in the

field had every reason to believe, based on the fixed

written record, that the last element of claim 1 was

written in means-plus-function format. They had no

reason to believe that years later Respondent would

surprise everyone by arguing the complete opposite.

The Federal Circuit, years after the ‘839 patent issued,

determined that the last element of claim 1 is not written

in means-plus-function format. App. at 7a-10a.

Petitioner certainly had no way of knowing that § 112,

116 would not apply to the applicable means-plus-function

claim element until the Federal Circuit ruled so nearly

eight years after the ‘839 patent issued.

Indeed, contrary to the Federal Circuit’s finding that

holes are the only required structure, the Applicant and

the Patent Office expressly agreed that the Applicant

needed to “better defin[e] the holes” in order to obtain

allowance. Supp. App. at SA-7. But, holes by themselves

would not need better defining because “holes” are

“holes.” This conclusion is further buttressed by the

specification which discloses six structures used in

combination with a hole for performing the claimed

functions: (1) a slot; (2) a threaded hole; (3) a locking

nut; (4) an undersized hole; (5) a slotted, undersized hole;

and (6) threaded or slotted studs. Supp. App. at SA-6.

Using functional language to delineate the

boundaries of an invention is problematic. This Court

in Halliburton noted some of these problems. Congress,

as a result, enacted safeguards to ensure that claim

elements written in “means for performing a specified

function” language did not suffer these aforementioned

23

problems. The Federal Circuit’s judicially-created

presumptive—rather than mandatory— application of

§ 112, 1 6 weakens these safeguards and in turn

resurrects the very problems that concerned this Court

years ago. As a result, this Court’s guidance is needed

to properly interpret 35 U.S.C. § 112, 16.

B. Using A Judicially-Created Presumption To

Allow Judicial Exceptions To The Mandate

Of 35 U.S.C. § 112, 1 6 Violates Basic

Principles Of Statutory Interpretation

The Federal Circuit’s construction of § 112, 16

violates basic principles of statutory interpretation

enunciated by this Court, namely this Court’s

instruction that exceptions should not be implied to

statutory provisions. Just as these basic principles of

statutory interpretation apply to any other statutory

enactment, these same principles should apply with

equal force to the provisions of the Patent Act.

As noted above, section 112 explicitly governs the

claim interpretation of claim elements written in means-

plus-function format. Specifically, § 112, 16 provides:

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.

35 U.S.C. § 112, 1 6 (emphasis added).

24

This statutory provision is clear. It mandates

interpretation under § 112, 1 6 when an applicant writes

a claim element in “means for performing a specified

function” language. It provides no exceptions.

See United States v. Rutherford, 442 U.S. 544, 552 (1979)

(“Exceptions to clearly delineated statutes will be

implied only where essential to prevent ‘absurd results’

or consequences obviously at variance with the policy

of the enactment as a whole.”); see also Lexecon, Inc. v.

Milberg Weiss Bershad Hynes & Lerach, 523 U.S. 26,

35 (1998) (noting that the statutory instruction “comes

in terms of the mandatory ‘shall,’ which normally creates

an obligation impervious to judicial discretion”).

Notably, the statute does not provide that § 112, 16

is inapplicable when there is some recital of structure.

See, e.g., Laitram, 939 F.2d at 1536 (“The recitation of

some structure in a means plus function element does

not preclude the applicability of section 112(6).”). Rather,

the plain meaning of § 112, 1 6 requires that claim

language using the words “means for,” plus the recital

of functions to be performed, shall be interpreted in

accordance with 35 U.S.C. § 112, 16 in all circumstances.

That the claim language may also describe one of the

structures which may perform part or all of the claimed

functions does not change the analysis. Cf William F.

Lee & Eugene M. Paige, 80 J. Pat. & Trademark Off.

Soc’y at 266 n.106 (noting that although the Federal

Circuit opted for a different interpretation, the use of

the word “may” in the statute could be interpreted to

“permit the patentee to use a means-plus-function claim

form with the option of reciting structure”). In these

fact situations, the structure described in the claim

language may simply be one of or part of one of the

25

structures from the specification for the court to

consider in construing the means-plus-function

language. This result provides a consistent

interpretation, without any loopholes, in all

circumstances. See Kimberly A. Moore et al., Patent

Litigation And Strategy 321-24 (2d ed. 2003)

(suggesting that a “black letter rule” would be better

than inconsistencies caused by current law); Kimberly

A. Moore, 9 Lewis & Clark at 248 (same).

Nevertheless, as discussed above, the Federal

Circuit does not apply § 112, 1 6 if the Federal Circuit

determines that a claim element recites “sufficient

structure.” The creation of this judicial exception is

contrary to the statutory mandate that claim elements

“expressed as a means or step for performing a specified

function . .. shall be construed to cover the

corresponding structure ... described in the

specification and equivalents thereof.” Indeed, this

judicially-created exception conflicts with this Court’s

mandate that “federal courts do not sit as councils of

revision, empowered to rewrite legislation in accord with

their own conceptions of prudent public policy.”

Rutherford, 442 US. at 555.

The need for this Court’s guidance is compelling.

Recently, this Court has indicated a willingness to offer

guidance in the construction of federal statutes that

significantly affect patent rights. See Merck KGaA v.

Integra LifeSciences I, Ltd., 545 U.S. 193, 202-08 (2005);

see also Eli Lilly & Co. v. Medtronic, Inc., 496 U.S. 661

(1990) (interpreting 35 U.S.C. § 271(e)(1)). For example,

in Merck KGaA, the Federal Circuit nar: owly construed

§ 271(e)(1), the statutory infringement exemption for

26

acts “reasonably related to the development and

submission of information under a Federal law” which

regulates drug use. Merck KGaA, 545 U.S. at 205-06; 35

U.S.C. § 271(e)(1). Despite the breadth of § 271(e)(1), the

Federal Circuit created uncertainty by limiting the

statutory exemption to activities which actually produced

information that ultimately was submitted to the FDA.

Merck KGaA, 545 U.S. at 201, 206-07. The Federal Circuit

interpreted § 271(e)(1) in this manner even though the

statutory language provided no such limitation. The

uncertainty created by this interpretation, in turn, unfairly

expanded a patent owner’s rights by allowing a patent

owner to accuse exempted activities as infringement.

This Court reversed the Federal Circuit’s statutory

construction because the research process is often fraught

with uncertainty. Jd. at 206-07. In other words, not every

course of experimentation will lead to a FDA submission.

Id. As a result, the scope of the exemption as interpreted

by the Federal Circuit was uncertain—one could never

know at the time experimentation began if a FDA

submission would ultimately be made and therefore if the

exemption would apply. 7d. In light of the statute’s

language (which did not narrowly limit the exempted

activities as held by the Federal Circuit), this Court

concluded that:

There is simply no room in the statute for

excluding certain information from the

exemption on the basis of the phase of research

in which it is developed or the particular

submission in which it could be included.

Id. at 202.

27

Similarly, here, the scope of 35 U.S.C. § 112, 16

vastly impacts the scope of a patent owner’s patent

claims—the most critical part of a patent granting

monopoly rights. The current interpretation of 35 U.S.C.

§ 112, 16, like the interpretation given to § 271(e)(1) by

the Federal Circuit in Merck KGaA, creates uncertainty.

Whereas in Merck KGaA one could never be certain if

its activity fell under the statutory exemption until years

later, here one could never be certain if its activity is

infringing because it is impractical to know in some

circumstances, like here, if a claim element avoids § 112,

16, until the Federal Circuit hangs its hat on analysis of

whether the claim element recites “sufficient structure,”

whatever that means. The Federal Circuit’s application

of § 112, 16 has the effect of allowing a patent owner to

expand improperly its patent rights in some situations

and prevent competitors from engaging in lawful activity.

The Supreme Court has not yet addressed the

proper interpretation of 35 U.S.C. § 112, 16. Petitioner

believes that it is now appropriate to do so. The Federal

Circuit’s current construction is contrary to principles

of statutory interpretation. This construction leads to

the very problems of claim uncertainty, ambiguity and

unwarranted broadness that caused this Court to

initially question the appropriateness of “means for

performing a specified function” claim language before

the enactment of 35 U.S.C. § 112, 9 6.

28

Il. THE FEDERAL CIRCUIT CREATED AN

INTRA-CIRCUIT SPLIT REGARDING THE

PUBLIC NOTICE FUNCTION OF A PATENT’S

PROSECUTION HISTORY

The need for this Court’s guidance is further

augmented by the Federal Circuit’s intra-circuit split

regarding the proper role of a patent’s prosecution

history in the claim construction process. This Court

has previously made clear that a patent is no different

from any other legal instrument. See Markman v.

Westview Instruments, Inc., 517 U.S. 370, 388-90 (1996).

Like any other written instrument, such as a contract,

a patent is to be interpreted by the judge and it is “to

be construed .. . according to its tenor.” Jd. at 388. In

line with this directive, the Federal Circuit generally

interprets a patent consistently with the intrinsic

evidence, which includes the prosecution history. See,

e.g., Schoenhaus v. Genesco, Inc., 440 F.3d 1354, 1358-

59 (Fed. Cir. 2006); Spring Window Fashions LP v. Novo

Indus. L.P., 323 F.3d 989, 995 (Fed. Cir. 2003); Sage

Prods., 126 F.3d at 1425, 1432. Indeed, the Federal

Circuit has held that the prosecution history is to be

used for the precise issue here—determining whether

35 U.S.C. § 112, 16 applies. See Cole, 102 F.3d at 531-32.

But, in this case, the Federal Circuit reversed course

by interpreting the patent claim at issue in direct

contravention of an explicit agreement between the

Patent Office and the Applicant. App. at 7a-10a; see also

Supp. App. at SA-7. This type of intra-circuit

disagreement within the court with exclusive jurisdiction

over patent cases is problematic, especially given that

claim construction is an issue that arises in nearly every

patent case.

29

This Court has not yet delineated a complete

framework for judges to follow when construing patent

claims. In this absence, the Federal Circuit has

enumerated a general set of principles for the lower

courts to follow. Of importance here, is the overarching

principle that patent claims are generally to be

interpreted in light of the intrinsic evidence, 7.e., the

patent and its corresponding prosecution history.

See Vitronics Corp., 90 F.3d at 1582-83. Indeed, the

Federal Circuit has repeatedly emphasized the

importance of the prosecution history in claim

interpretation:

[The prosecution history] contains the complete

record of all the proceedings before the Patent

and Trademark Office, including any express

representations made by an applicant regarding

the scope of the claims. As such, the record

before the Patent and Trademark Office is often

of critical significance in determining the

meaning of the claims.

Id. at 1582 (emphasis added); see also Cole, 102 F.3d at

531 (“We decide on an element-by-element basis, based

upon the patent and prosecution history, whether § 112,

{6 applies.”). In short, the very “purpose of consulting

the prosecution history in construing a claim is to exclude

any interpretation that was disclaimed during

prosecution.” Chimie v. PPG Indus., Inc., 402 F.3d 1371,

1384 (Fed. Cir. 2005) (internal quetations omitted).

In light of the importance attributed to the

prosecution history, the Federal Circuit routinely binds

an applicant to any agreement between the applicant

30

and the Patent Office as memorialized in the prosecution

history. See, e.g., Schoenhaus, 440 F.3d at 1859 (“If the

additional limitation of rigidity in the Examiner’s

Amendment was improper or unnecessary, plaintiffs

should have raised this issue by appeal before the

PTO.”); Sage Prods., 126 F.3d at 1432 (stating that “[a]

patentee is not free to retrade or renege on a deal struck

with the PTO during patent prosecution”); ef Festo, 535

U.S. at 734-41 (patentee presumptively bound under

doctrine of prosecution history estoppel by subject

matter surrendered during prosecution). Failure to so

bind the applicant would completely vitiate the public

notice function served by the applicant’s statements in

the prosecution history. See Spring Window, 323 F3d

at 995 (holding that “[w]ere we to accept [the patentee’s]

position, we would undercut the public’s reliance on a

statement that was in the public record and upon which

reasonable competitors formed their business

strategies.”); see also Sage Prods., 126 F:3d at 1425.

Even though ail legal instruments should be

interpreted consistently with their intrinsic evidence and

even though the Federal Circuit’s previous case law

illustrated a propensity for doing just that, the Federal

Circuit has now deviated from this well-established

principle. As explained above, in negotiating for his

patent, the Applicant and the Patent Office expressly

agreed in writing that the last element of claim 1 would

be written in means-plus-function format to obtain

issuance of the patent. Supp. App. at SA-7. The

Applicant then amended his patent claim to include the

agreed-to statutory “means for performing a specified

function” language in the patent ciaim, and told the

Patent Office that he made the amendment in xccordance

with their agreement. Supp. App. at SA-9-SA-11.

31

To avoid a finding of non-infringement, Respondent

persuaded the Federal Circuit to allow it to renege on

the Applicant’s deal with the Patent Office and now some

eight years later to interpret the claim element not as a

means-plus-function element. App. at 7a-10a; see also

Supp. App. at SA-7. In essence, the Federal Circuit

allowed Respondent to rewrite a critical element of its

patent claim in order to broaden impermissibly the

scope of the Applicant’s bargained-for-agreement with

the Patent Office. In doing so, the Federal Circuit

created an intra-circuit split on how to handl2 what

happened before the Patent Office. This is problematic

because the public can no longer be certain that an

applicant will be bound by his or her bargained-for-

agreement with the Patent Office, and consequently the

publie can no longer be certain about the scope of

protection afforded by a patent.

A court cannot rewrite a contractual provision to

cover a situation that was expressly excluded from the

contract. See, e.g., Holpuch, 328 U.S. at 238-40 (holding

claim for damages barred where respondent failed to

“abide by the appeal provisions of Article 15 of the

contracts” because “[t]o do otherwise is to rewrite the

contract”); Front Row Theatre, 18 F.3d at 1347 (plaintiff

not entitled to insurance coverage where cause of

damage was specifically excluded from contract);

cf United States v. Am. Surety Co., 322 U.S. 96, 101-02

(1944) « [Wje are not justified in rewriting the clear

provisions of the contract to include what might well

have been but was not inserted ...”); Am. Capital Corp.

v. Fed. Deposit Ins. Corp., 472 F.3d 859, 865 (Fed. Cir.

2006) (“We cannot rewrite a contract or insert words to

which a party has never agreed.”). Analogously, a court

32

cannot rewrite patent claims to cover a product or

process that the applicant expressly excluded from the

patent’s scope during the negotiation process with the

Patent Office to obtain the patent grant in the first place.

This Court’s guidance is needed to reaffirm the binding

affect of an applicant’s bargained-for-agreement with

the Patent Office.

CONCLUSION

To give proper direction to the Federal Circuit and

the public on patent interpretation, the petition for a

writ of certiora:i should be granted.

Respectfully submitted,

GREGORY J. VOGLER

Counsel of Record

RoBeRT A. SURRETTE

McAnprews, HELD & MALLoy, LTD.

500 Wes Madison Street

Suite 3400

Chicago, IL 60661

(312) 775-8000

Attorneys for Petitioner

APPENDIX

la

APPENDIX A — OPINION OF THE UNITED

STATES COURT OF APPF ALS FOR THE FEDERAL

CIRCUIT DECIDED JANUARY 29, 2008

UNITED STATES COURT OF APPEALS

FOR THE FEDERAL CIRCUIT

2007-1327

TRIMED, INCORPORATED,

Plaintiff-Appellant,

v.

STRYKER CORPORATION,

Defendant-Appellee.

Appeal from the United States District Court for the

Central District of California in case no. 06-CV-1918,

Judge Manuel L. Real.

DECIDED: January 29, 2008

Before LINN, DYK, and MOORE, Circuit Judges

MOORE, Circuit Judge.

Plaintiff-appellant TriMed, Inc. (TriMed) appeals

the summary judgment of noninfringement granted in

favor of defendant-appellee Stryker Corporation

(Stryker) by the United States District Court for the

2a

Appendix A

Central District of California. Because the district court

construed the relevant claim language incorrectly, we

reverse.

BACKGROUND

TriMed owns U.S. Patent No. 5,981,889 (‘839

patent), which pertains to an implantable device for

fixing bone fractures using screws, pins, and a plate with

holes on one end for receiving screws and on the

opposite end for receiving pins. In one embodiment of

the ‘839 patent, the plate is fitted across a bone fracture

such that the pin holes are positioned over the fractured

bone fragment and the screw holes are positioned over

the stable bone fragment. The screws affix the plate to

the stable bone fragment. The pins fixate the fracture

by passing through the pin holes of the plate, traversing

the fracture such that the pins penetrate the fractured

bone fragments and embed in the stable bone fragment.

Figure 5 of the ‘839 patent illustrates this embodiment:

1

3a

Appendix A

Stryker manufactures and sells implantable wrist

fracture fixation devices that also involve screws, pins,

and plates with holes. The following x-ray depicts the

implantation of one such device:

As shown, Stryker’s plate has been implanted on the

distal radius. Pins have been inserted distally through

the fractured bone fragment at an angle into the stable

bone fragment. Screws have been inserted proximally

to secure the plate to the stable bone fragment.

4a

Appendix A

TriMed sued Stryker, alleging that Stryker’s wrist

fracture fixation devices infringe the ‘839 patent. Claim

1, the only independent claim at issue, reads as follows:

An implantable device for fixation of at least

one fractured bone fragment to a stable bone

fragment, said implantable device comprising

an implantable plate having opposite end

portions, fastening means for securing one

end portion of said plate to stable bone, at

least one fixation pin for penetrating said at

least one fractured bone fragment, and

traversing a fracture for entering the stable

bone fragment and for being secured therein

at a stable fixation site at a far end of said

fixation pin, the opposite, near end of said pin

being adapted for extending from the

fractured bone fragment, said near end of said

pin being engageable in one of a plurality of

holes in the other end portion of the plate,

said holes in said plate providing means for

allowing the pin to slide axially therein but

preventing compression across the fracture,

and stabilizing said near end of the pin

against displacement in the plane of the

plate.

‘839 Patent col.6 11.17-32 (emphasis added).

Stryker moved for summary judgment of

noninfringement, asserting that the phrase, “said holes

in said plate providing means for allowing the pin to slide

Sa

Appendix A

axially therein but preventing compression across the

fracture, and stabilizing said near end of the pin against

displacement in the plane of the plate,” is a means-plus-

function limitation governed by 35 U.S.C. § 112 1 6.

Stryker argued, based upon two separate grounds, that

this means-plus-function limitation is not present in the

accused devices. First, according to Stryker, the

language at issue requires surgeons to perform the

functions of “allowing the pin to slide axially therein but

preventing compression across the fracture” and

“stabilizing said near end of the pin against

displacement in the plane of the plate.” Because,

Stryker contended, its accused devices do not by

themselves perform the claimed functions and that it

does not supply the surgeons who may use the devices

to perform the claimed functions, it cannot be held liable

for infringement. Second, Stryker argued that the only

corresponding structures disclosed in the specification

of the ‘839 patent for performing the claimed functions

are “hole[s] plus some other structure.” As the accused

devices contain holes and nothing more, Stryker

asserted that it did not infringe on the ‘839 patent.

Adopting Stryker’s proposed claim construction and

signing without any modification Stryker’s Rule 56

Statement of Facts and Conclusions of Law, the district

court entered summary judgment of noninfringement

against TriMed. TriMed timely appealed, and we have

jurisdiction over this appeal pursuant to 28 U.S.C.

§ 1295(a)(1).

6a

Appendix A

DISCUSSION

de

The task of determining whether the relevant claim

language contains a means-plus-function limitation is,

as with all claim construction issues, a question of law

that we review de novo. Cybor Corp. v. FAS Techs. Inc.,

138 F.3d 1448, 1455-56 (Fed. Cir. 1998) (en banc). Use of

the word “means” in claim language creates a

presumption that § 112 1 6 applies. See Greenberg w.

Ethicon Endo-Surgery, Inc., 91 F.3d 1580, 1583 (Fed.

Cir. 1996). If, in addition to the word “means” and the

functional language, the claim recites sufficient

structure for performing the described functions in their

entirety, the presumption of § 112 16 is overcome—the

limitation is not a means-plus-function limitation.

See Lighting World, Inc. v. Birchwood Lighting, Inc.,

382 F.8d 1354, 13860 (Fed. Cir. 2004) (“[T]he fact that a

particular mechanism .. . is defined in functional terms

is not sufficient to convert a claim element containing

that term into a ‘means for performing a specified

function’ within the meaning of section 112(6).”); Sage

Prods., Inc. v. Devon Indus., Inc., 126 F:3d 1420, 1427-

28 (Fed. Cir. 1997). Sufficient structure exists when the

claim language specifies the exact structure that

performs the functions in question without need to

resort to other portions of the specification or extrinsic

evidence for an adequate understanding of the

structure. See Altiris, Inc. v. Symantec Corp., 318 F.3d

1363, 1376 (Fed. Cir. 2003); see also Envirco Corp. v.

Clestra Cleanroom, Inc., 209 F.3d 1360, 1365 (Fed. Cir.

Ta

Appendix A

2000) (finding that “baffle means” defeated the § 112

16 presumption because “the term ‘baffle’ itself imparts

structure”).

The district court erred in concluding that the

language at issue in claim 1 was means-plus-function

language that invoked § 112 16. To be sure, the claim

discloses functions for the holes—allowing a pin to slide

axially through the pin plate while preventing

compression across the bone fracture, and stabilizing

the exposed end of the pin against displacement in the

plane of the plate. As our precedent makes clear, the

presence of the word “means” and the articulation of a

function is not the end of the inquiry. Just as clearly,

the claim articulates the structure for performing the

claimed functions—the holes. The functional language

defines the size and shape of the claimed holes. The

interior of the holes must be shaped to allow pins to

slide through axially while the boundaries of ine holes

must be sized appropriately to hold the pins in place

and limit their movement across the plane of the plate.

The claim language makes clear that the structure for

performing these functions is the holes themselves.

Since the claim language clearly identifies the

structure for performing the functions in claim 1, it was

unnecessary and inappropriate for the court to employ

§ 112 1 6 and to hold that there must be a structure in

addition to the holes (such as a slot) for performing these

functions. Even if we were to construe this as a § 112

16 claim, the specification discloses an embodiment that

has precisely the same structure that is found in the

8a

Appendix A

accused devices. The specification states: “In one

embodiment the pins 8 are bent over the superficial

surface of the plate 1 as stated above.” ‘839 Patent col.5

11.24-25. The reference is to an earlier part of the

specification, which stated that: “The rigidity of pin

fixation of the fracture fragment is considerably

improved by having it pass through one of the small holes

3 and possibly a tight slot 4 in the pin plate 1 which has

been secured to the proximal fragment 10. After the pin 8

is placed, it can be bent over the superficial surface of the

plate 1 to keep it from migrating.” ' Jd. col.4 11.56-61.

Stryker argues that the prosecution history of the

‘839 patent dictates that the claim limitation at issue

does not recite sufficient structure for performing the

described functions and instead must be read as

requiring “hole [s] plus another structure.” Specifically,

Stryker points to an interview summary that states,

“Agreement was reached that the expression of [the

configuration of the pin to be attached to the plate in a

sliding manner that prevents compression across the

fracture] in a means-plus-function format and better

defining the holes of the plate would distinguish over

the prior art of record.” * Because TriMed subsequently

1. Additional structures for performing the claimed

functions beyond mere holes, such as slots and other means for

snap engagement of the pin to the plate, are recited in

dependent claims not discussed in this opinion. See, e.g., ‘839

Patent col.6 11.36-39.

2. A statement that use of means-plus-function language

would help overcome prior art does not magically transform

(Cont'd)

9a

Appendix A

amended claim 1 to include the claim language in dispute,

Stryker contends that the language must be construed

as a means-plus-function limitation.

We disagree. While TriMed did use the word

“means” in its amendment, its attorney remarks

accompanying the amendment indicate that it intended

for holes by themselves to constitute structure sufficient

for allowing pins to slide axially through without

compressing the fracture and stabilizing the pin from

displacement across the plane of the plate. As the

remarks put forth:

The invention provides for stabilization of the

end of the pin projecting from the fractured

bone fragment without compromising the

securing of the fractured bone segment to the

stable bone segment without compression at

the fracture. This is achieved by utilization of

the pin plate 1 which has holes at one end

portion for being fixed to stable bone while

the opposite end has holes for engaging the

protruding end of the pin, so as to prevent

displacement of the protruding end of the pin

in the plane of the pin plate and wherein the

hole provides means for allowing the pin to

slide axially in the hole in the pin plate but

preventing compression across the fracture.

(Cont’d)

language that clearly does not meet our legal tests for § 112 16

into means-plus-function language.

10a

Appendix A

Nowhere in those remarks does TriMed suggest the

importance of any structure in addition to holes, as

Stryker would have us believe. See Cole v. Kimberly-

Clark Corp., 102 F.3d 524, 531 (Fed. Cir. 1996) (explaining

that the claim drafter’s “perfunctory addition of the

word ‘means’ did nothing to diminish the precise

structural character” of the claim limitation). The

prosecution statement does not even suggest that

structure in addition to holes is required.

For the foregoing reasons, the claim language at

issue recites sufficient structure on its face for

performing the claimed functions, and therefore,

contrary to the district court’s interpretation, does not

involve a means-plus-function limitation.

Il.

We review the district court’s grant of summary

judgment without deference, reapplying the same

standard required of the court below. Lacavera v.

Dudas, 441 F.3d 13880, 1382 (Fed. Cir. 2006). Summary

judgment is appropriate only “if the pleadings,

depositions, answers to interrogatories, and admissions

on file, together with the affidavits, if any, show that

there is no genuine issue as to any material fact and

that the moving party is entitled to judgment as a matter

of law.” Fed.R.Civ.P. 56(c).

Stryker’s motion for summary judgment of

noninfringement was premised solely upon reading the

claim language at issue as a means-plus-function

lla

Appendix A

limitation. Having properly construed the relevant claim

language as falling outside the ambit of § 112 11 6, we

hold that Stryker has failed to demonstrate that there

is no genuine issue of material fact that its accused

devices do not infringe on the ‘839 patent. By Stryker’s

own admission, the structural limitation of holes in

claim | is certainly present in its accused devices.*

Moreover, TriMed has adduced enough evidence to

establish, at minimum, a genuine issue of material fact

as to whether Stryker’s accused devices perform the

claimed functions. TriMed submitted a declaration from

Dr. Leon Benson, an orthopedic hand surgeon, which

stated that the holes in Stryker’s accused devices

perform both claimed functions based on his review of

x-rays of the implanted Stryker plates and Stryker’s

operative technique manuals. TriMed also submitted a

declaration from Dr. Robert Medoff, an orthopedic hand

surgeon and the inventor behind the ‘839 patent, that

stated that, based on an analysis of a product sample of

Stryker’s plates and its operative technique manual,

pins can be slid axially through the pin holes in Stryker’s

3. With a side-by-side comparison of figure 5 of the ‘839

patent and the x-ray of Stryker’s implanted plate, it is hard to

imagine any significant structural differences between the two.

Indeed, Stryker was unable to point out any differences on

appeal, only contending during oral argument that figure 5 does

not show whether the pin has been inserted through a hole or a

hole with some other structure. As the proper construction of

claim 1 encompasses embodiments using holes to receive pins—

with or without some other structure—this argument is

unconvincing.

12a

Appendix A

plates such that compressive force across a fracture is

avoided, and that the holes are “small enough to secure

the pin from lateral movement thus stabilizing the pin

from translational displacement in the plane of the

plate.”

Stryker’s only counterargument below, which the

district court adopted—that it did not supply the

surgeons who were purportedly required to perform the

claimed functions of the ‘839 patent—is wholly

unpersuasive. No credible reading of the claim language

requires human input to perform the functions of the

pin holes in TriMed’s plate. Stryker’s only response on

appeal—that “the accused devices do rot permit the end

of the pin to be locked to the pin plate”—is similarly

unavailing. Locking the pin to the plate is simply not a

requirement of the claim language. Thus, because the

summary judgment of noninfringement is inappropriate,

we reverse.

CONCLUSION

Because the claim language of the ‘839 patent

articulates sufficient structure for performing the

functions of allowing pins to slide axially through the

pin plate and stabilizing said pins from movement across

the plane of the plate of the claimed invention, we

determine that the district court improperly interpreted

the pin holes claim limitation as governed by § 112 16.

In light of the proper claim construction, the grant of

13a

Appendix A

summary judgment of noninfringement must be

reversed. We reman*! for further proceedings consistent

with our opinion and in view of the entire record.‘

REVERSED AND REMANDED

4. Given our holding vacating the summary judgment of

noninfringement, the time for discovery ought to be reinstated

as originally scheduled in this case. The seventeen days of

discovery should be fully restored.

14a

APPENDIX B — JOINT STIPULATION OF THE

UNITED STATES DISTRICT COURT FOR THE

CENTRAL DISTRICT OF CALIFORNIA, WESTERN

DIVISION DATED AND FILED MARCH 28, 2007

UNITED STATES DISTRICT COURT

CENTRAL DISTRICT OF CALIFORNIA

WESTERN DIVISION

Case No. CV-06-1918 R(SHx)

TRIMED, INC.,

a California corporation,

Plaintiff,

v.

STRYKER CORP,

a Michigan corporation,

Defendant.

JOINT STIPULATION OF DISMISSAL OF STRYKER

CORPORATION’S COUNTERCLAIM OF INVALIDITY

WITHOUT PREJUDICE

THE PARTIES HEREBY AGREE AND STIPULATE

TO THE FOLLOWING:

1. On March 28, 2006, TriMed, Inc. (“TriMed”) filed

its Complaint against Stryker Corporation (“Stryker”)

alleging infringement of U.S. Patent No. 5,931,839 (“the

‘839 patent”).

15a

Appendix B

2. Stryker answered on May 19, 2006, denying the

Complaint, asserting affirmative defenses, and alleging

counterclaims seeking declarations of noninfringement

and invalidity.

3. TriMed filed its reply to Stryker’s counterclaims

on June 6, 2006.

4. On January 16, 2007, Stryker filed a motion for

summary judgment asserting that Stryker does not

infringe any asserted claim of the ‘839 patent either

literally or under the doctrine of equivalents.

5. On March 19, 2007 (“March 19th Order”), the

Court issued an Order granting Stryker’s motion for

summary judgment of noninfringement that the accused

Stryker products do not infringe any asserted claims of

the ‘839 patent, either literally or under the doctrine of

equivalents. The Order further dismissed with prejudice

TriMed’s Complaint against Stryker.

6. The March 19th Order does not constitute a final

judgment because it did not dispose of all the claims in

the action. See Pause Technology LLC v. Tivo Inc., 401

F'3d 1290 (Fed. Cir. 2005). Namely, the March 19th Order

did not address Stryker’s counterclaim that the claims

of the ‘839 patent are invalid.

7. Accordingly, the parties jointly stipulate that

Stryker’s counterclaim of invalidity is hereby dismissed

without prejudice.

16a

Appendix B

Respectfully submitted,

By s/ Mark Grossman

Lee F. Grossman

Mark M. Grossman

Jeffrey M. Drake

GROSSMAN LAW OFFICES

29 South LaSalle Street, #1210

Chicago, Illinois 60603

Attorneys for Plaintiff,

TRIMED INCORPORATED

Respectfully submitted,

By s/ Robert Surrette

Gregory J. Vogler

Robert A. Surrette

Sara J. Bartos

McANDREWS, HELD & MALLOY

500 West Madison Street, 34th Floor

Chicago, Illinois 60661

Attorneys for Defendant,

STRYKER CORPORATION

IT IS SO ORDERED

Dated: March 28, 2007

s/ Manuel Real

Honorable Manuel L. Real

Judge, United States District Court

17a

APPENDIX C — MINUTES OF PROCEEDINGS OF

THE UNITED STATES DISTRICT COURT FOR

THE CENTRAL DISTRICT OF CALIFORNIA

DATED MARCH 19, 2007

UNITED STATES DISTRICT COURT

CENTRAL DISTRICT OF CALIFORNIA

CIVIL MINUTES - GENERAL

CASE NO.: CV-06-1918-R Date: March 19, 2007

TITLE: TRIMED INC V. STRYKER CORP

PRESENT:

HON. MANUEL L. REAL, JUDGE

William Horrell Cindy Nirenberg

Deputy Clerk Court Reporter

ATTORNEYS PRESENT FOR PLAINTIFFS:

Mark Grossman

Robert Garretson

ATTORNEYS PRESENT FOR DEFENDANTS:

Robert Surrette

Morgan Tovey

PROCEEDINGS: Defendant’s motion for summary

judgment of noninfringement of ‘839 patent

The Court GRANTS the motion, and signs the

proposed uncontroverted facts and conclusions

of law, and the proposed judgment.

MINUTES FORM 90 4 min

CIVIL -- GEN Initials of Deputy Clerk WH

18a

APPENDIX D — JUDGMENT OF THE UNITED

STATES DISTRICT COURT FOR THE CENTRAL

DISTRICT OF CALIFORNIA, WESTERN DIVISION

DATED AND FILED MARCH 19, 2007

UNITED STATES DISTRICT COURT

CENTRAL DISTRICT OF CALIFORNIA

WESTERN DIVISION

CASE NO. CV-06-1918 R(SHx)

TRIMED, INC.

a California corporation,

Plaintiff,

v.

STRYKER CORP

a Michigan corporation,

Defendant.

JUDGMENT GRANTING DEFENDANT STRYKER’S

MOTION FOR SUMMARY JUDGMENT OF

NONINFRINGEMENT OF THE ‘839 PATENT

Date: March 19, 2007

Time: 10:00 a.m.

Hon. Manuel L. Real

fPROPOSED] JUDGMENT

Having fully considered Defendant Stryker

Corporation’s (“Stryker”) Motion for Summary Judgment

of Noninfringement of the ‘839 Patent, TriMed, Inc.’s

19a

Appendix D

(“TriMed”) response thereto, Stryker’s reply, the

declarations, exhibits, and memoranda submitted

therewith and the relevant authorities cited, and the

arguments and materials presented at the hearing,

IT IS HEREBY ORDERED AND JUDGED AND

DECREED:

1. The accused products do not infringe any asserted

claim of U.S. Patent No. 5,931,839 either literally or under

the doctrine of equivalents;

2. Defendant’s Motion for Summary Judgment of

Noninfringement of U.S. Patent No. 5,931,839, in favor of

Stryker and against plaintiff TriMed, is granted; and

3. As summary judgment on all counts has been

rendered against Plaintiff TriMed, Plaintiff TriMed’s

Complaint is hereby DISMISSED WITH PREJUDICE.

IT IS SO ORDERED

s/ Manuel L. Real

Hon. Manuel L. Real

UNITED STATES DISTRICT JUDGE

Dated: March 19, 2007

20a

APPENDIX E — STATEMENT OF UNCONTRO-

VERTED FACTS AND CONCLUSIONS OF LAW IN

SUPPORT OF STRYKER’S MOTION FOR SUMMARY

JUDGMENT OF NONINFRINGEMENT OF THE

‘839 PATENT SIGNED BY HON. MANUEL L. REAL

ON MARCH 19, 2007

UNITED STATES DISTRICT COURT

CENTRAL DISTRICT OF CALIFORNIA

WESTERN DIVISION

CASE NO. CV-06-1918 (SHx)

TRIMED, INC.

a California corporation,

Plaintiff,

v.

STRYKER CORP

a Michigan corporation,

Defendant.

STATEMENT OF UNCONTROVERTED FACTS

AND CONCLUSIONS OF LAW IN SUPPORT OF

STRYKER’S MOTION FOR SUMMARY JUDGMENT

OF NONINFRINGEMENT OF THE ‘839 PATENT

Date: March 19, 2007

Time: 10:00 a.m.

Hon. Manuel L. Real

2la

Appendix E

Statement Of Uncontroverted Facts

And Conclusions Of Law

Defendant Stryker Corp. (“Stryker”) filed its

Motion for Summary Judgment of Noninfringement of

the ‘839 Patent on January 8, 2007 (“Motion”). In its

Motion, Stryker contends that none of the accused

products infringes any asserted claim of the U.S. patent

no. 5,931,839 (“the ‘839 patent”), and plaintiff TriMed,

Inc. (“TriMed”) has not carried its burden of proving

infringement.

The Findings of Fact Not Genuinely Disputed and

Conclusions of Law In Support are set forth below. See

Fed. R. Civ. P. 52.

I. FINDINGS OF FACT NOT GENUINELY

CONTESTED

A. The Parties

1. Defendant Stryker is a Michigan corporation

having a principal place of business in Kalamazoo,

Michigan. Stryker develops, manufactures, and markets

specialty surgical and medical products.

2. Plaintiff TriMed is a California corporation

having a principle place of business in Valencia,

California. TriMed designs and sells orthopedic medical

devices for the fixation of fractures. TriMed is the

alleged assignee of the ‘839 patent.

22a

Appendix E

B. The History Of The Case

3. TriMed filed its complaint of patent infringement

against Stryker on March 28, 2006. (“Complaint,” Docket

No. 1.)

4. Stryker filed an answer, affirmative defenses, and

counterclaims on May 19, 2006. (“Answer,” Docket No.

17.)

5. TriMed filed a reply to Stryker’s counterclaims

on June 6, 2006. (“Reply,” Docket No. 20.)

6. TriMed provided responses to Stryker’s First Set

of Interrogatories on September 27, 2006. (Ex. 1,

Plaintiff’s Responses To Defendants’ /sic] First Set of

Interrogatories.) On December 6, 2006, December 26,

2006, and January 10, 2007, TriMed supplemented its

responses to Stryker’s First Set of Interrogatories.

(Ex. 2, Plaintiff’s Supplemental Responses To

Defendants’ [sic] First Set of Interrogatories; Ex. 3,

Plaintiff’s Supplemental and Second Supplemental

Responses to Defendants’ /sic/ First Set of

Interrogatories; Ex. 4, Plaintiff’s Supplemental

Response to Defendants’ /sic/ Interrogatory No. 2.)

C. The ‘839 Patent

7. The ‘839 patent relates to a plate having holes,

screws, and pins for fixing broken bones. (Ex. 5, ‘839

patent.)

23a

Appendix E

8. Figures 1, 4, and 5 of the ‘839 patent, reproduced

below, illustrate “a top view of a radio pin plate according

to one embodiment of the invention,” “an exploded view

of one embodiment of the invention,” and “one

embodiment of the invention fixed to the radius,”

respectively. (/d. at Figures 1, 4, and 5; and 3:50-51, 55-

58.)

24a

Appendix E

9. One “primary objective” of the alleged invention

of the ‘839 patent is to “satisfy the goal of providing

rigid fixation of fracture fragments while allowing

immediate motion of a joint.” (Jd. at 3:35-37.)

10. TriMed has asserted claims 1, 2, and 7-11 against

Stryker. (Ex. 6, 8/23/06 Letter from J. Drake to B.

Surrette.)

11. Claim 1, the only independent claim of the ‘839

patent, recites:

An implantable device for fixation of at least

one fractured bone fragment to a stable bone

fragment, said implantable device comprising

an implantable plate having opposite end

portions,

fastening means for securing one end portion

of said plate to stable bone,

at least one fixation pin for penetrating said

at least one fractured bone fragment, and

traversing a fracture for entering the stable

bone fragment and for being secured therein

at a stable fixation site at a far end of said

fixation pin,

the opposite, near end of said pin being

adapted for extending from the fractured

bone fragment,

25a

Appendix E

said near end of said pin being engageable in

one of a plurality of holes in the other end

portion of the plate,

said holes in said plate providing means for

allowing the pin to slide axially therein but

preventing compression across the fracture,

and stabilizing said near end of the pin against

displacement in the plane of the plate.

(Ex. 5, 839 patent, claim 1.)

12. The ‘839 patent specification discloses that “the

actual dimensions [of the holes and the pins] to be used

are decided by the surgeon in each case based on the

specific circumstances such as fracture site, fragment

size, bone condition, etc.” (Jd. at 4:42-45.) In addition,

“(t]he number of pins 8 used and their angle of insertion

is decided in each case by the surgeon depending on

the site ancl size of the specific fracture or fractures.”

(Id. at 5:60-63).

13. The specification of the ‘839 patent discloses:

If a hole 3 with a slot 4 at the distal portion 5

of the plate 1 is used, the pin 8 will be placed

first, and the plate 1 slid along the surface of

the bone 10 to engage the pin 8. In one

embodiment the entrance slot 4 is slightly

undersized and capable of slight widening as

the pin passes through the slot. This way, the

26a

Appendix E

plate 1 will “snap” as the pin 8 is passed into

the slot 4, preventing disengagement.

(Id. at 5:3-10.)

14. The specification of the ‘839 patent discloses:

In another embodiment, threaded pins 8 are

used which pass through threaded holes

within the plate 1.

(Id. at 5:25-27.)

15. The specification of the ‘839 patent discloses:

Optionally the pins 8 are locked with locking

means such as a locking nut. This provides

fixation of the pin 8 in space in both a

transverse plan (in the plan of the plate 1) and

an axial plane (along the axis of the pin 8).

(Id. at 5:27-31.)

16. The specification of the ‘839 patent discloses:

In a further embodiment (not shown) the

openings 3 for receiving the pins 8 are slightly

undersized with a cut extending from the hole

3 to the edge of the plate 1.

(Id. at 5:34-36.)

27a

Appendix E

17. The specification of the ‘839 patent discloses:

Alternatively, a slotted hole 3 is used which

joins a slightly undersized hole 3, instead of a

slightly larger © ole. In this circumstance, as

the pin 8 is snapped into the hole 3, it is

effectively locked into place.

Ud. at 5:45-48.)

18. The specification of the ‘839 patent discloses:

In a further embodiment (not shown) the pin

plate 1 is furnished with one or more threaded

studs. The pin 8 is hooked around one stud

and locked against the pin plate 1 with a

threaded locking nut on the stud. Instead of

locking the pin around the stud, the stud may

have a slot for receiving the pin 8. After the

pin has been placed in the slot a locking nut is

screwed onto the stud to lock the pin 8 in the

slot of the stud.

(Id. at 5:49-56.)

19. The specification of the ‘839 patent discloses:

The fixation of the pins 8 at the pin plate 1 is

accomplished in different ways in different

embodiments of the invention. In one

embodiment the pins 8 are bent over the

28a

Appendix E

superficial surface of the plate 1 as stated

above.

(Id. at 5:22-25.)

D. The Accused Products

20. TriMed alleges that the following plate models,

used in conjunction with K-wires, infringe the asserted

claims of the ‘839 patent: 54-25400, 54-25401, 54-25402,

54-25403, 54-25404, and 54, 25405. (Ex. 1, Plaintiff’s

Responses To Defendants’ /sic] First Set Of

Interrogatories, at 3; Ex. 3, Plaintiff’s Supplemental and

Second Supplemental Responses to Defendants’ /szc/

First Set of Interrogatories, at 5.)

21. Two of the accused plates are reproduced below

from photographs in a product brochure (Ex. 7, Bates

Nos. SC 000455-462, Universal Distal Radius System,

Operative Technique, 1000-405-017, Rev. A, 2005, at

00457):

29a

Appendix E

E. TriMed’s Discovery Responses

22. In response to Stryker’s Interrogatory No. 4

requesting that TriMed “set forth in a claim chart or

otherwise explain how each element or limitation of each

[asserted] claim is found in [the accused products],”

TriMed stated:

Regarding claim 1, Stryker’s pin-plate

products are implantable plate devices which

fix at least one fractured bone fragment to a

stable bone fragment. The plates have

opposite end portions; the end portion with

smaller holes typically used near or at the situs

of the fractured bone fragment. Stryker sells

fastening means (screw) for securing one end

of the plate to the stable bone fragment.

Stryker sells a fixation pin which pierces and

passes through the fractured bone fragment.

The fixation pin likewise pierces the stable

bone, and the opposite end of the pin extends

from the fractured bone fragment and into one

of the holes at the fractured bone fragment

end of the pin-plate, i.e., opposite the plate-

end containing the screw(s). The pin is capable

of moving in and/or out of the hole in the plate.

The plate structure prevents the fracture

from being compressed and stabilizes the pin.

Stryker directly and literally infringes claim

2 of the ‘839 patent since, in addition to having

all of the claim limitations of claim 1, one of

30a

Appendix E

the holes in Stryker’s pin-plate products is

located in the plate and is near the entrance

of the fixation pin into the bone fragment.

Stryker directly and literally infringes claim

7 of the ‘839 patent since, in addition to having

all of the claim limitations of claim 1, the pin-

plate products sold by Stryker are shaped to

conform to the shapes of the stable and

fractured bone fragments.

Stryker directly and literally infringes claim

8 of the ‘839 patent since, in addition to having

all of the claim limitations of claim 1, one of

the fastening means for securing the Stryker

pin-plate to the stable bone fragment can be

a screw(s).

Stryker directly and literally infringes claim

9 of the ‘839 patent since, in addition to having

ali of the claim limitations of claim 1, the

Stryker fixation pin used with the Stryker

pin-plate device is bendable back to the face

of the pin-plate which prevents the pin and

plate from separating from one another.

Stryker directly and literally infringes claim

10 of the ‘839 patent since, in addition to

having all of the claim limitations of claim 1,

Stryker’s fixation pin contains a smooth

portion to allow for the piercing and entry into

the fractured bone fragment.

3la

Appendix E

Stryker directly and literally infringes claim

11 of the ‘839 patent since, in addition to

having all of the claim limitations of claim 1,

the Stryker fixation pins used with its pin-

plate system are bendable by hand and have

a diameter between 0.35 inch and 0.062 inch.

(Ex. 1, Plaintiff’s Responses to Defendants’ /sic] First

Set of Interrogatories, at 3-5.)

23. In response to Stryker’s Interrogatory No. 12

requesting the factual bases for TriMed’s infringement

allegations, TriMed stated:

[Plaintiff] has observed Stryker’s devices and

products which infringe the ‘839 Patent

offered for and/or sold at the American

Academy Association of Hand Surgeons

conference and other orthopedic meetings of

doctors around the United States. Such

devices infringe because they meet all of the

limitations of claims 1, 2, 7, and 9-11.

(Id. at 10.)

24. In its supplemental response to Stryker’s

Interrogatory No. 4, TriMed stated:

Stryker’s pin-plate products, identified in

response to Interrogatory No. 3, directly and

literally infringe claims 1, 2, and 7 through 11.

IN addition to the response regarding

32a

Appendix E

claim 1, Stryker’s pin-plate products are

implantable plate devices which fix at least one

fractured bone fragment to a stable bone

fragment. Stryker sells fastening means

(screws) for securing one end of the plate to

the stable bone fragment. Stryker sells a

fixation pin which pierces and passes through

the fractured bone fragment. Stryker’s

fixation pin likewise pierces the stable bone,

and the opposite end of the pin extends from

the fractured bone fragment and into one of

the holes at the fractured bone fragment end

of the pin-plate, i.e., opposite the end of plate

containing the screw(s). Stryker’s pin is

capable of axially moving in and out of the hole

in the plate; the size and shape of the holes

limit the pin from migrating transversely in

relation to the holes.

(Ex. 2, Plaintiff’s Supplemental Responses to

Defendants’ /sic) First set of Interrogatories, at 5.)

25. In its supplemental response to Stryker’s

Interrogatory No. 12, TriMed stated:

TriMed further states it has observed

Stryker’s devices and products which infringe

the ‘839 Patent offered for and/or sold at the

American Academy of Orthopaedic Surgeons

instructional course during May 2004 in

Chicago, Illinois. Such devices infringe

“ie

33a

Appendix E

because they meet all of the limitations of

claims 1, 2, 7, 8, and 7-11 /sic/.

(id. at 10.)

26. In its second supplemental response to

Stryker’s Interrogatory No. 4, TriMed stated:

TriMed also believes Stryker product

numbers 54-25402, 54-25403, 54-25404, and

54-25405 infringe the ‘839 Patent claims but

Stryker has not provided requested samples

to date and thus Plaintiff cannot complete its

analysis. Upon receipt of said products, if

TriMed determines these products infringe

the claims of he ‘839 Patent, it will supplement

this response.

(Ex. 38, Plaintiff’s Supplemental and Second

Supplemental Responses to Defendants’ /sic] First Set

of Interrogatories, at 5.)

27. In its responses and supplemental responses to

Stryker’s Interrogat. ries, TriMed did not provide any

evidence that surgeons have used or are using the

accused products in an infringing manner. (/d. at 5; Ex.

1, Plaintiff’s Responses to Defendants’ /sic] First Set

of Interrogatories, at 3-5, 10; Ex. 2, Plaintiff’s

Supplemental Responses to Defendants’ /szc/ First Set

of Interrogatories, at 5, 10.)

34a

Appendix E

II. CONCLUSIONS OF LAW

A. Legal Principles of Summary Judgment

28. Summary judgment “shall be rendered

forthwith” where “there is no genuine issue as to any

material fact” and “the moving party is entitled to

judgment as a matter of law.” Fed. R. Civ. P. 56 (c).

29. The Federal Circuit routinely affirms summary

judgment of noninfringement. See, e.g., Norian Corp.

v. Stryker Corp., 482 F.3d 1356 (Fed. Cir. 2005); Biagro

Western Sales, Inc. v. Grow More, Inc., 423 F.3d 1296

(Fed. Cir. 2005); V-Formation, Inc. v. Benetton Group

SpA, 401 F.3d 1307 (Fed Cir. 2005); C.R. Bard, Inc. »v.

United States Surgical Corp., 388 F.3d 858 (Fed. Cir.

2004); Phonometrics, Inc. v. Westin Hotel Co., 319 F-3d

1328 (Fed. Cir. 2003); TechSearch L.C. v. Intel Corp., 286

F.3d 1860 (Fed. Cir. 2002); Talbert Fuel Sys. Co. v.

Unocal Corp., 347 F3d 1355 (Fed. Cir. 2003); Novartis

Corp. v. Ben Venue Labs., 271 F.3d 1043 (Fed. Cir. 2001);

Ballard Med. Prods. v. Allegiance Healthcare Corp., 268

F.3d 1352 (Fed. Cir. 2001).

30. In a patent infringement action, “the accused

infringer .. . is entitled to summary judgment, on the

ground of noninfringement, by pointing out that the

patentee failed to put forth evidence to support a finding

that a limitation of the asserted claim was met by the

structure in the accused devices.” Johnston v. IVAC

Corp., 885 F.2d 1574, 1578 (Fed. Cir. 1989). See also

Celotex Corp. v. Catrett, 477 U.S. 317, 322-23 (1986).

35a

Appendix E

B. Legal Principles of Patent Infringement

31. To prove infringement of an asserted claim,

TriMed must show, by a preponderance of the evidence,

that every limitation in the claim appears in the accused

product. Rohm & Haas Co. v. Brotech Corp., 127 F.3d

1089, 1092 (Fed. Cir. 1997); see also Zygo Corp. v. Wyco

Corp., 79 F.3d 1563, 1568 (Fed. Cir. 1996).

32. If an independent ciaim is not infringed, then

any dependent claim depending from that independent

claim cannot be infringed. See Wahpeton Canvas Co. v.

Frontier, Inc., 870 F.2d 1546, 1552 n.9 (Fed. Cir. 1989).

33. A claim for patent infringement involves a two-

step inquiry. Biagro Western, 423 F.3d at 1301. First,

the court construes the asserted claims as a matter of

law. Id. After the claims are construed, the next issue is

to determine whether the accused device infringes the

properly construed claims. /d.

C. The Accused Products Do Not Infringe The

‘839 Patent As A Matter Of Law

34. The accused products do not infringe the ‘839

patent because they do not have “holes in said plate

providing means for allowing the pin to slide axially but

preventing compression across the fracture, and

stabilizing said near end of the pin against displacement

in the plane of the plate” as required by claim 1.

36a

Appendix E

35. Because at least one claim limitation of

independent claim 1 is not present in the accused

products, there can be no infringement as a matter of

law.

36. Claim elements that are written in means-plus-

function form are interpreted in accordance with

35 U.S.C. § 112, 16, which provides:

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.

37. The statute permits a claim element to be

expressed as a means for performing a specified

function. Symbol Techs., Inc. v. Opticon, Inc., 935 F.2d

1569, 1575 (Fed. Cir. 1991). “[T)he scope of such a claim

is not limitless, but is confined to structures expressly

disclosed in the specification and corresponding

equivalents.” Jd. (emphasis added). See also In re

Donaldson Co., 16 F.3d 1189, 1195 (Fed. Cir. 1994) (en

banc); Alpex Computer Corp. v. Nintendo Co., 102 F.3d

1214, 1222 (Fed. Cir. 1996).

38. An equivalent structure in the context of the

statute “results from an insubstantial change which

adds nothing of significance to the structure, material,

37a

Appendix E

or acts disclosed in the patent specification.” Valmont

Indus., Inc. v. Reinke Mfg. Co., 983 F:2d 1039, 1043 (Fed.

Cir. 1993).

39. Literal infringement of a § 112, 16 claim limitation

requires that the relevant structure in the accused product

perform the identical function recited in the claim and be

identical or “equivalent” to the corresponding structure

in the specification. See Odetics, Inc. v. Storage Tech. Corp.,

185 F.3d 1259, 1267 (Fed. Cir. 1999). Under a modified

version of the function-way-result methodology described

in Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339

U.S. 605, 608 (1950), two structures may be “equivalent”

for purposes of § 112, 1 6 if they perform the identical

function, in substantially the same way, with substantially

the same result. See Odetics, 185 F.3d at 1267. “When a

court determines that the ‘way’ and/or ‘result’ is/are

substantially different under a 35 U.S.C. section 112,

paragraph 6 equivalents analysis, a patentee cannot prevail

under the doctrine of equivalents for the same reason(s).”

Kemco Sales, Inc. v. Control Papers Co., 208 F3d 1352,

1365 (Fed. Cir. 2000).

40. The first step in a means-plus-function claim

analysis is to define the function(s) being claimed. Budde

v. Harley-Davidson, Inc., 250 F.3d 1369, 1876 (Fed. Cir.

2001); Medtronic, Inc. v. Advanced Cardiovascular Sys.,

Inc., 248 F.3d 1303, 1311 (Fed. Cir. 2001). The next step is

to identify “the corresponding structure, material, or acts

described in the specification” for performing the claimed

function. Budde, 250 F3d at 1376; Medtronic, 248 F.3d at

1311.

38a

Appendix E

1. TriMed Cannot Establish Direct

Infringement Because The Accused Plates

Do Not Perform The Claimed “Preventing

Compression” and “Stabilizing [The] Near

End Of The Pin” Functions

41. The functions in the last means-plus-function

claim limitation of claim 1 are: (1) allowing the pin to

slide axially but preventing compression across the

fracture; and (2) stabilizing the near end of the pin

against displacement in the plane of the plate.

42. The accused plates do not perform these claimed

functions or their equivalents. Accordingly, Stryker does

not infringe the asserted claims of the ‘839 patent.

43. Stryker cannot be adjudged to be an infringer

simply because the accused produ ts are capable of

being made into an infringing device by a surgeon. Cross

Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc.,

424 F.3d 1293, 1310 (Fed. Cir. 2005).

2. The Accused Products Do Not Contain The

Structure Disclosed In The ‘839 Patent

Specification Or Its Equivalent For

Performing The Claimed “Preventing

Compression” and “Stabilizing” Functions

44. The accused plates do not contain the structure

disclosed in the ‘839 patent specification or its equivalent

for performing the claimed functions of allowing the pin

to slide axially but preventing compression across the

39a

Appendix E

fracture, and stabilizing the near end of the pin against

displacement in the plane of the plate.

45. The scope of the means-plus-function claim

limitations of claim 1 is confined to those structures

which are expressly disclosed in the specification of the

‘839 patent and corresponding equivalents. Symbol

Techs., 935 F.2d at 1575.

46. Because the accused products do not perform

the claimed functions or their equivalents, and do not

contain the structure disclosed in the ‘839 patent

specification or its equivalent for performing those

functions, the accused products do not infringe the

claims of the ‘839 patent literally or under the doctrine

of equivalents as a matter of law.

III. CONCLUSION

47. For the above reasons, the accused products do

not infringe the asserted claims of the ‘839 patent either

literally or under the doctrine of equivalents. Stryker is

entitled to summary judgment of noninfringement as a

matter uf law.

IT ISSO ORDERED.

Date March 19, 2007

s/ Hon. Manuel L. Real

United States District Judge

40a

Appendix E

Dated: January 16, 2007

Respectfully submitted,

s/ Gregory J. Vogler

Gregory J. Vogler (pro hac vice)

Robert A. Surrette (pro hac vice)

Sara J. Bartos (pro hac vice)

McANDREWS, HELD

& MALLOY, LTD.

500 West Madison Street, 34th Floor

Chicago, Illinois 60661

Telephone: (312) 775-8000

Facsimile: (312) 775-8100

Tamara M. Rudolph (SBN 228940)

REED SMITH LLP

355 South Grand Avenue, Suite 2900

Los Angeles, CA 90071-1514

Telephone: (213) 457-8000

Facsimile: (213) 457-8080

Morgan W. Tovey (SBN 136242)

William Ross Overend (SBN 180209)

REED SMITH LLP

Two Embarcadero Center, Suite 2000

San Francisco, California 94111-3922

Telephone: (415) 543-8700

Facsimile: (415) 391-8269

Attorneys for Defendant and

Counter-Plaintiff

STRYKER CORP

4la

APPENDIX F — ORDER OF THE UNITED STATES

DISTRICT COURT FOR THE CENTRAL DISTRICT

OF CALIFORNIA, WESTERN DIVISION

DATED AND FILED FEBRUARY 20, 2007

UNITED STATES DISTRICT COURT

CENTRAL DISTRICT OF CALIFORNIA

WESTERN DIVISION

No. CV-06-1918 R(SHx)

TRIMED, INCORPORATED,

Plaintiff,

v.

STRYKER CORPORATION,

a Defendant.

ORDER DENYING TRIMED, INC.’S EX PARTE

MOTION TO EXTEND DATES

Judge: Manuel L. Real

Ctrm: 8

The Court has reviewed the papers and arguments

related to TriMed, Inc.’s Ex-Parte Motion To Extend

The Dates For: (1) Serving TriMed’s Damage Expert

Report; (2) Filing Its Opposition To Stryker’s Motion

For Summary Judgment And TriMed’s Counter-Motion

for Summary judgment, And (3) Authorizing Documents

To Be Filed Under Seal.

42a

Appendix F

IT IS HEREBY ORDERED THAT:

1. TriMed, Inc.’s Motion is DENIED.

2. TriMed, Inc. is precluded from submitting any

expert report in this case;

3. TriMed, Inc. must file its Opposition to Stryker’s

Motion for Summary Judgment no later than March 5,

2007; and

4. TriMed, Inc. is precluded from conducting further

third-party discovery in this case.

IT IS SO ORDERED

Dated: Feb. 20, 2007

s/ Manuel L. Real

Honorable Manuel L. Real

Judge, United States District Court

43a

APPENDIX G — ORDER OF THE UNITED STATES

COURT OF APPEALS FOR THE FEDERAL

CIRCUIT DENYING PETITION FOR REHEARING

AND PETITION FOR REHEARING EN BANC

FILED MARCH 10, 2008

UNITED STATES COURT OF APPEALS

FOR THE FEDERAL CIRCUIT

2007-1327

TRIMED, INCORPORATED,

Plaintiff-Appellant,

V.

STRYKER CORPORATION,

Defendant-Appellee.

Appeal from the United States District Court for the

Central District of California in case no. 06-CV-1918,

Judge Manuel L. Real.

ORDER

A petition for rehearing en banc having been filed

by the: Appellee, and the matter having first been

referred as a petition for rehearing to the panel that

heard the appeal, and thereafter the petition for

rehearing en banc having been referred to the circuit

judges who are in regular active service,

44a

Appendix G

UPON CONSIDERATION THEREDOE it is

ORDERED that the petition for 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 March 17,

2008.

FOR THE COURT,

s/ Jan Horbaly

Jan Horbaly

Clerk

Dated: 03/10/2008

ec: Mark M. Grossman

Gregory J. Vogler

45a

APPENDIX H — 35 U.S.C. § 112, 16

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.