Ruling that the district court erred in its claim construction and that the mistake could have affected the jury’s infringement verdict, the U.S. Court of Appeals for the Federal Circuit remanded for a new trial in a case involving a medical device technology. Smith & Nephew, Inc., et al. v. Arthrex, Inc., Case No. 09-1091 (Fed. Cir., Dec. 2, 2009) (per curiam) (non-precedential)

Plaintiff Smith & Nephew’s asserted patent describes methods for placing and securing a suture anchor in a bone. Upon retrial after the first jury deadlocked in June 2007, the district court entered judgment in June 2008 in favor of the plaintiff after an infringement verdict that awarded about $15 million in damages coupled with a permanent injunction.

In its non-precedential opinion, the Federal Circuit found the district court’s construction of a critical claim term incorrect because it conflicted with the appellate court’s own 2001 construction of a similar term in a prior suit involving the same patent, but a different defendant. However, the Federal Circuit rejected Arthrex’s request to enter a judgment of non-infringement because a new jury could still find infringement, even with the new construction. Additionally, the Court rejected Arthrex’s appeal of the district court’s denial of summary judgment on patent invalidity.

Notably, the Federal Circuit rejected Smith & Nephew’s argument that Arthrex failed to preserve the claim construction issue for appeal because Arthrex allegedly did not raise the issue in its pre-trial motions and then allegedly argued for a different construction in its post-trial judgment as a matter of law (JMOL) motion. Citing its 2008 decision in O2 Micro Int’l Ltd., the Court found Arthrex’s losing arguments and objections at the Markman hearing sufficient to preserve appeal. Likewise, the issue was not waived post-trial because Arthrex’s argument at that point was within the confines of the district court’s claim construction.