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

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## Record

- **Collection:** Supreme Court brief
- **Document type:** Petition for Writ of Certiorari
- **Published:** January 1, 2008

## Text

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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

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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.

---

Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386020_0992%3A1. Public record. Not legal advice.