In determining that the claims were entitled to broad, plain meaning interpretation and that an opinion of counsel did not serve as an automatic “good faith” shield, the U. S. Court of Appeals for the Federal Circuit deferred to a jury’s finding of willful infringement. Acumed LLC v. Stryker Corp. et al.. Case Nos. 06-1260, -1437 (Fed. Cir., Apr. 12, 2007) (Garjasa, J.).

In August of 2002, Stryker was in the process of developing an orthopedic nail having a curved shank. Orthopedic surgeons use shaped nails of this type to treat shoulder fractures by inserting the nail into a hole that is drilled into and down the shaft of the bone. Before offering its nail commercially, Stryker sought advice from its counsel to determine whether its orthopedic nail would infringe claims of Acumed’s patent. Both Stryker’s German and American counsel expressed concern that any curved nail would fall within the broad scope of Acumed’s patent claims. However, when asked for a formal opinion, Stryker’s American counsel opined that both the claims were not infringed and invalid and provided this opinion to Stryker in November of 2003. By the time Stryker received this favorable opinion, it had already sought FDA approval but had not yet made the nail available for sale commercially. In contrast to the opinion, a jury found that the nail infringed Acumed’s patent and that Stryker’s infringement was willful.

On appeal, Stryker argued improper claim construction for multiple patent terms to obviate the jury’s finding of infringement. In what has become a relative rarity in the post-Phillips world, the Court rejected each claim-narrowing argument, issuing a warning (honored more in the breach) that importing features of a preferred embodiment or from other dependant claims is improper when construing claim terms.

After rejecting Stryker’s claim construction arguments (and maintaining a relatively broad, plain meaning claim construction), the Court focused on whether Stryker’s opinion of counsel protected it against willful infringement. The Court noted that “[w]illfulness is not an all or nothing trait, but one of degree.” Because two independent attorneys expressed the same concern regarding inevitable infringement by any curved orthopedic nail and because, despite this advice, Stryker pushed forward and filed an FDA application months before obtaining the favorable non-infringement and invalidity opinion, Stryker’s opinion of counsel did not serve as an absolute shield against a finding of willful infringement.

Practice Note: Obtaining a favorable opinion of counsel is not an absolute defense against a claim of willful infringement. A timely competent opinion and actual reliance on that opinion is needed to provide a good-faith defense against a claim of willful infringement.