In Stryker v. Zimmer, Stryker filed suit alleging infringement of three patents by Zimmer. The patents relate to devices used to remove damaged tissue and clean bones during joint-replacement surgery. The jury found the three asserted patents to be valid and infringed, and awarded Stryker $70 million in lost profit damages. Following the jury trial, the district court trebled the $70 million award based on Zimmer’s willful infringement, because the court found that: (1) Zimmer “all but instructed its design team to copy Stryker’s products”; (2) Stryker’s patents were pioneering; and (3) the secondary considerations of non-obviousness “made it dramatically less likely that Zimmer’s invalidity arguments were reasonable.” Zimmer appealed.
The Federal Circuit reversed the finding of willful infringement and vacated the treble damages award, holding that the district court “failed to undertake an objective assessment of Zimmer’s specific defenses to Stryker’s claims.” In the court’s view, Zimmer’s invalidity arguments were not unreasonable, even though they were unsuccessful at trial. The Court reasoned that Stryker had to: (1) obtain broad claim construction for terms not explicitly supported by the specification; (2) convince the jury about the location of an infringing component to meet the claim limitations; and (3) overcome statements made during prosecution that were relevant to this location. From the Court’s standpoint, these “extra miles” by Stryker demonstrated that Zimmer’s invalidity defenses were not objectively unreasonable, and therefore, Zimmer did not act recklessly.
Whether a defendant’s subjective belief that a patent is invalid is a defense to willful infringement remains to be a hotly contested issue- one that the U.S. Supreme Court will likely address after granting certiorari in Commil v. Cisco. For now, the Federal Circuit has set a high standard for patentees to prove willful infringement in order to obtain treble damages in patent infringement lawsuits.
Stryker v. Zimmer, 2014 WL 7210311 (Fed. Cir. 2014).