Opinion
ORDER ON CROSS-MOTIONS FOR PARTIAL SUMMARY JUDGMENT RE: INFRINGEMENT OF THE 555 PATENT
GARY TAYLOR, District Judge.
Plaintiff's motion for partial summary judgment is GRANTED. Defendants' motion for partial summary judgment is DENIED.
I. BACKGROUND
Plaintiff Cross Medical Products is the assignee of two patents relating to surgical implant devices used for the fixation and manipulation of the spine, U.S. Patent Nos. 5, 466, 237 ("the 237 Patent") and 5, 474, 555 ("the 555 Patent"). The parties' cross-motions for partial summary judgment focus solely on the 555 Patent.
The 555 Patent describes an orthopedic surgical implant used to stabilize and align the bones of a patient's spinal column. The invention allows a surgeon to insert a bone screw into the spinal bones of a patient and to place a stabilization rod through the "anchors" of the bone screw of two adjacent spinal bones, fixing the position of the patient's spine.
Plaintiff brought this action against Defendants Medtronic Sofamor Danek, Inc., and Medtronic Sofarmor Danek, USA, Inc., alleging infringement of the 237 and 555 patents. Defendants counterclaimed, seeking a declaration of non-infringement and invalidity.
Plaintiff moves for partial summary judgment of infringement of Claim 5 of the 555 Patent. Defendant moves for partial summary judgment of non-infringement on Claim 5.
II. DISCUSSION
Summary judgment is proper if "there is no genuine issue as to any material fact and the moving party is entitled to a judgment as a matter of law." Fed.R.Civ.P. 56(c).
A. Patent Infringement
In a patent case, the proper construction of the claims of the patent at issue is a question of law for the court. See Markman v. Westview Instruments, Inc. , 517 U.S. 370, 372 (1996). Where the parties do not dispute relevant facts regarding the accused product but disagree over the meaning and scope of the claims, the question of infringement becomes one of claim construction and is appropriate for summary judgment. Id.
Infringement analysis involves two steps. First, the claims of the patent must be interpreted and construed by the court. Second, the construed claims must be compared to the accused products to determine whether each claim is found in the accused product. See Markman v. Westview Instruments, Inc. , 52 F.3d 967, 976 (Fed. Cir. 1995). As a matter of law, a patent claim is not infringed if an element of the claim is not present in the accused device. Digital Biometrics, Inc. v. Indentix, Inc. , 149 F.3d 1335, 1349 (Fed. Cir. 1998).
A party may prove infringement, even without a literal correspondence between the accused device and the claims of the patent, where the differences between the two are insubstantial. See General Mills, Inc. v. Hunt-Wesson, Inc. , 103 F.3d 978, 984 (Fed. Cir. 1997). Under this "doctrine of equivalence, " a plaintiff must show the accused device "performs substantially the same function in substantially the same way to obtain substantially the same result" as the patented design. See Graver Tank & Mfg. Co. v. Linde Air Products Co. , 339 U.S. 605, 608 (1950). The Supreme Court in Warner-Jenkinson v. Hilton Davis Chemical Co. held the doctrine of equivalence must be applied to the individual elements of the claim, not the invention as a whole. 520 U.S. 17, 29 (1997). If the accused product does not meet one or more limitations in a claim, either literally or under the doctrine of equivalence, the claim cannot be infringed as a matter of law. See Id .; Netword, LLC v. Central Corp. , 242 F.3d 1347, 1353-54 (Fed. Cir. 2001).
B. Claim 5 of the 555 Patent
Claim 5 of the 555 Patent covers an anchor seat means with "an anchor seat portion... including a channel to receive said rod... said rod to bear against said channel through the application of substantially equal compressive forces by said securing means in the direction of the vertical axis."
Defendants advance four arguments why their products do not infringe this claim. They contend their products do not include: (1) "anchor seat means" that have a "lower bone interface operatively joined to said bone segment [of the spine]"; (2) "securing means" which apply "substantially equal" compressive forces in the direction of the vertical axis on "either side along said longitudinal axis of said channel"; or (3) a rod that "bear[s] against said channel." Defendants also argue they do not place their devices into patient's spines, which only surgeons do.
1. "Anchor Seat Means" for Operative Joinder
Claim 5 requires "an anchor seat means which has a lower bone interface operatively joined to said bone segment...." Defendants argue "operative joinder" requires the screw be secured into the bone so the bottom surface of the anchor seat is joined to the bone, or to washers that sit above the bone. They assert the anchor seat must be joined to the bone to add stability to the rod, and, if the anchor seat were not joined as such, the anchor seat would move freely. Defendants claim their devices rigidly link the rod, the anchor seat, and the screw to the bone segment without joining the anchor seat to the bone segment.
Defendants argue the term "operatively" should be interpreted to mean "to produce an appropriate effect." WEBSTER'S NINTH NEW COLLEGIATE DICTIONARY at 827 (1991). They further argue the effect of providing limited motion and stability between the anchor seat and the bone segment can be found in the patent specification. The Court cannot accept Defendants' proposed definition, which would require incorporation of an additional limitation into the claim. Plaintiff argues the word "operatively" means "involving surgical operations." WEBSTER'S COLLEGE DICTIONARY at 948 (1991). Since the claim language concerns a surgical procedure, this definition is logical. Thus, "operative joinder" in this claim means to "connect during a surgical procedure."
"[P]articular embodiments appearing in a specification will not be read into the claims when the claim language is broader than such embodiments." Rhine v. Casio, Inc. , 183 F.3d 1342, 1346 (Fed. Cir. 1999).
"Joined" means "to bring together or in contact; connect, " WEBSTER'S COLLEGE DICTIONARY at 728 (1991), or "a surface forming a common boundary of two bodies." WEBSTER'S NINTH NEW COLLEGIATE DICTIONARY at 631 (1991).
Defendants' contentions its products are not designed for stabilization by connecting to the bone are irrelevant because the claim does not refer to the purpose of the connection, and the Court will not read this limitation into the claim. Further, "the accused device, to be infringing, need only be capable of operating in the [infringing] mode... actual [infringing] mode operation in the accused device is not required." Intel Corp. v. U.S. Intern. Trade Com'n , 946 F.2d 821, 832 (Fed. Cir. 1991); see also Hilgraeve Corp. v. Symantec Corp. , 265 F.3d 1336, 1343 (Fed. Cir. 2001) ("an accused device may be found to infringe if it is reasonably capable of satisfying the claim limitations, even though it may also be capable of non-infringing modes of operation."). Defendants' devices are capable of operative joinder to the bone segment, and are sometimes used in this way. Defendants' products meet the "operative joinder" limitation of Claim 5.
Defendants correctly point out "a device does not infringe simply because it is possible to alter it in a way that would satisfy all the limitations of a patent claim." High Tech Medical Instrumentation, Inc. v. New Image Industries, Inc. , 49 F.3d 1551, 1555 (Fed. Cir. 1995). However, the rule does not apply in this case because Defendants' products do not need to be altered to connect to the bone segment.
Plaintiff moved for leave to file a surreply to respond to Defendants' evidence on this issue. Since this evidence was not controlling, Plaintiff's arguments are moot.
2. "Securing Means" and "Substantially Equal Compressive Forces"
Claim 5 requires "securing means" to "cause said rod to bear against said channel through the application of substantially equal compressive forces by said securing means in the direction of the vertical axis and applied on either side along said longitudinal axis of said channel." In other words, when the securing means (a nut) is screwed all the way on, it applies a force to the rod, which compresses the rod against the anchor seats and secures the rod in place.
Both parties agree this is a means-plus-function limitation. "[F]or a means-plus-function limitation to read on an accused device, the accused device must employ means identical to or the equivalent of the structures, material, or acts described in the patent specification." Valmont Industries, Inc. v. Reinke Mfg. Co. , 983 F.2d 1039, 1042 (Fed. Cir. 1993). The question is whether the accused device "performs the function in substantially the same way to achieve substantially the same result." IMS Tech., Inc. v. Haas Automation, Inc. , 206 F.3d 1422, 1435 (Fed. Cir. 2000).
Plaintiff argues Defendants' internal nut performs compression in substantially the same way as an outer nut to achieve substantially the same result. Plaintiff cites deposition testimony showing the opposite points of contact on the rod are 180 degrees apart and the screw is intended to be coaxial with the anchor means. Although Plaintiff does not provide tests showing the magnitude of the force on either side, everything before the Court supports the conclusion the forces are substantially equal. Defendants submit no evidence to show the forces are not equal. Viewing the devices themselves and the testimony, it appears Defendants' inner screw meets the limitation of applying substantially equal compressive forces on either side of the channel.
In moving for non-infringement, Defendants urge the Court to interpret Claim 5 to require substantially equal forces on either side of the "channel, " not either side of the "vertical axis." Defendants argue this interpretation leads to a finding of non-infringement because their internal screws do not apply compressive forces on the outside of the channel. Even assuming Defendants' interpretation is correct, Defendants' screw would still meet this limitation because it applies forces on either side of the channel. Defendants provide no support for their additional limitation requiring the force be applied on the outside of the channel.
3. "Bear Against Said Channel"
Defendants contend none of their products meet Claim 5's requirement that the rod bear against the channel. In its February 11, 2002 Order in the AcroMed case, the Court held AcroMed's "pressure disk, " which was physically between the rod and the anchor means, did not avoid infringement. This Court held "Claims 5 and 7 broadly cover an anchor seat with a channel through which the stabilization rod runs and upon which the rod bears. There is nothing in the claim language which excludes an anchor channel composed of more than one component part." February 11, 2002 Order at 6:16-19. Defendants claim their products do not meet this limitation because their products contain a crown which bears against the rod, and the crown is not joined to the anchor means like the swedged pressure disks in AcroMed products.
Cross Medical Products, Inc. v. DePuy Acromed, Inc., et al., SA CV 00-876-GLT (ANx).
Plaintiff argues Defendants' crowns are physically joined to the anchor means because they cannot be removed without breaking the screw. Sherman Depo. at 123:8-124:1; 246:1-247:2. Defendants do not respond to this evidence, and they continue to insist their crowns are free-floating because there is no type of lock between the crown and the anchor means. Defendants have not given the Court a reason to depart from the previous ruling. Even if the crowns are not physically joined to the anchor means, "there is nothing in the claim language which excludes an anchor channel composed of more than one part." Defendants' products infringe on this portion of Claim 5.
4. Surgeon Implantation
Defendants argue Claim 5 defines a spinal fixation device that is already implanted in the spine because otherwise the "bone interface" of the anchor seat is not "operatively joined" to the spine. They further argue they cannot be liable as infringers because they do not implant products in a patient's spine - the surgeons do. This argument is questionable. In any event, under 35 U.S.C. § 271 Defendants can be liable for inducing the infringement or for selling a device which constitutes part of the invention.
II. DISPOSITION
Plaintiff's motion for partial summary judgment is GRANTED. Defendants' motion for partial summary judgment is DENIED.