Digest of Stryker Corp. v. Zimmer, Inc., No. 2013-1668 (Fed. Cir. Dec. 19, 2014) (precedential). On appeal from W.D. Mich. Before Prost, Newman, and Hughes.

Procedural Posture: Defendant accused infringer appealed the jury’s findings that the patents were valid and infringed. CAFC affirmed on validity and infringement, but reversed on willfulness.

  • Prosecution disclaimer: The district court erred when it held that the prosecution disclaimer was insufficiently clear and unmistakable because the previous version of the claim had additional limitations that were absent in the current claim. The CAFC held that “there is no reason why a disclaimer on a limitation within a narrower claim would not apply to the identical limitation within the broader claim, as the same concerns about the prior art would relate to both.” However, because this argument was not raised at or before the Markman hearing, the district court was correct in rejecting the argument for claim construction purposes, but still considering the argument for infringement purposes.
  • Infringement: The CAFC held that the patent owner presented sufficient evidence to support the jury’s finding of infringement with respect to one of the patents. The district court did not err when it held that “a front end for receiving the discharge tube and the suction tube” simply meant that the front end had to be able to connect directly to the discharge and suction tubes and that the claims were not limited to front ends that have female openings into which the discharge and suction tubes fit (as opposed to having male openings which fit into the female openings of the discharge and suction tubes).
  • Anticipation: The CAFC affirmed the jury’s finding of no anticipation, noting that the patent owner presented sufficient evidence that the prior art did not meet all of the claim limitations. Namely, the prior art did not have a separate part or assembly for securing the tips, which caused them to fall off, and were therefore not “mounted” as required by the claim.
  • Obviousness: The patentee presented sufficient evidence that it would not have been obvious to combine the two patents relied upon for the obviousness argument, and this was sufficient to affirm the trial court’s finding that claims were not obvious, despite the examiner’s previous rejection (and the patentee’s abandonment) of related claims on the basis of the same combination.
  • Willful Infringement: “Objective recklessness will not be found where the accused infringer’s ‘position is susceptible to a reasonable conclusion of no infringement.’ Uniloc USA, Inc. v. Microsoft Corp., 632 F.3d 1292, 1310 (Fed. Cir. 2011).” The CAFC held that because the accused infringer presented defenses to all of the asserted claims that were not objectively unreasonable, it did not act recklessly. The CAFC reversed the district court’s determination of willfulness. The CAFC noted that the district court failed to objectively analyze the accused infringer’s defenses, instead relying on evidence of similar design and secondary considerations of non-obviousness.
  • Attorney’s Fees: Because the award of attorney’s fees was based on the determination of willfulness, the award was vacated.