'444 claims a grisly apparatus, namely, driving...

...an orthopedic nail [into] the humerus (the upper arm bone which ends in the shoulder ball at top and the elbow joint at the bottom). In the most common form of fracture to this bone, the patient falls on top of his or her arm, breaking the shoulder ball (the “humeral cortex”) off from the longer part of the bone (the “humeral shaft”). Sometimes the humeral cortex itself breaks into two or three pieces as well. See ’444 patent col.1 ll.17-27. Orthopedic surgeons use nails like the one disclosed in the patent to treat this type of fracture by excavating a hole through the humeral cortex and down the humeral shaft, inserting the nail into the hole, then fixing it in place using bone screws that pass through holes in the nail. This procedure secures the bone pieces of the cortex to each other and to the shaft.

There were two disputed terms, both on appeal.

[The district court] defined “curved shank” as “a shank that has a bend or deviation from a straight line without sharp corners or sharp angles” and “transverse holes” as “holes across the butt portion of the nail.”

The claim term "curved" didn't throw the court a curve.

When construing claims, a court must begin by “look[ing] to the words of the claims themselves . . . to define the scope of the patented invention.” Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). The task of comprehending those words is not always a difficult one. “In some cases, the ordinary meaning of claim language as understood by a person of skill in the art may be readily apparent even to lay judges, and claim construction in such cases involves little more than the application of the widely accepted meaning of commonly understood words.” Id. at 1314. “[C]urved,” as it is used in the ’444 patent, is not a “term[] that ha[s] a particular meaning in a field of art.” Id. Its ordinary meaning encompasses “curvature” made up of small discontinuities. Consider, for instance, an archway made from rectangular bricks. The bricks are at angles with respect to each other, but the overall effect is to describe an arc. It would be unreasonable to say that such an archway is not “curved.” If the word “curved” is given its ordinary, lay meaning, the district court’s construction is correct.

Stryker, of course, wanted a narrow construction, specific to the disclosed embodiments, so as to try to skirt infringement. The CAFC didn't buy it.

Stryker argues that “curved” is implicitly assigned a different, narrower meaning by virtue of the context in the written description in which it appears. See id. at 1316 (“[T]he specification may reveal a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess. In such cases, the inventor’s lexicography governs.”). That argument is based on a particular manner of implanting the nail disclosed and touted by the written description.

Stryker’s argument is essentially an assertion that since the patent says broaching is desirable, the term “curved” must be construed to cover only embodiments whose curvature allows them to be inserted into a broached hole, excluding “angled bends or small radius curves.” That assertion is flawed: it is an attempt to import a feature from a preferred embodiment into the claims. See Phillips, 415 F.3d at 1323 (“[A]lthough the specification often describes very specific embodiments of the invention, we have repeatedly warned against confining the claims to those embodiments.”)... The fact that usability with a broaching tool is merely a feature of a preferred embodiment provides sufficient grounds for refusing to read “curved” narrowly.

Concomitant evidence for the broad construction was found in dependent claim 13, which narrowed the curve term. Prosecution note: claim differentiation in dependent claims opens the window for broader construction in independent claims.

the patent’s Claim 13 (not asserted by Acumed in this case) covers “[t]he nail of claim 1 having a profile that substantially passes within its own envelope.” ’444 patent col.6 ll.26-27. “[T]he presence of a dependent claim that adds a particular limitation raises a presumption that the limitation in question is not found in the independent claim.” Liebel-Flarsheim Co v. Medrad, Inc., 358 F.3d 898, 910 (Fed. Cir. 2004); see also Wegner Mfg., Inc. v. Coating Mach. Sys., Inc., 239 F.3d 1225, 1234 (Fed. Cir. 2001); Comark, 156 F.3d at 1187; Tandon Corp. v. U.S. Int’l Trade Comm’n, 831 F.2d 1017, 1023 (Fed. Cir. 1987). “That presumption is especially strong when the limitation in dispute is the only meaningful difference between an independent and dependent claim, and one party is urging that the limitation in the dependent claim should be read into the independent claim.” Sunrace Roots Enter. Co. v. SRAM Corp., 336 F.3d 1298, 1303 (Fed. Cir. 2003); see also Ecolab Inc. v. Paraclipse, Inc., 285 F.3d 1362, 1375-76 (Fed. Cir. 2002); Wegner Mfg., 239 F.3d at 1233 (“Claim differentiation . . . is clearly applicable when there is a dispute over whether a limitation found in a dependent claim should be read into an independent claim, and that limitation is the only meaningful difference between the two claims.”). If we were to give “curved” in Claim 1 the meaning which Stryker advances, Claim 1 would cover only nails that “substantially pass[] within [their] own envelope[s].” Such a restrictive reading would render Claims 1 and 13 identical in scope. Since independent claims are presumed to have broader scope than their dependents, the presumption is that Claim 1 should not be limited in the manner Stryker urges.

A claim term need not be construed to an exactitude beyond what prima facie evidence provides.

[A] sound claim construction need not always purge every shred of ambiguity. The resolution of some line-drawing problems—especially easy ones like this one—is properly left to the trier of fact. See PPG Indus. v. Guardian Indus. Corp., 156 F.3d 1351, 1355 (Fed. Cir. 1998) (“[A]fter the court has defined the claim with whatever specificity and precision is warranted by the language of the claim and the evidence bearing on the proper construction, the task of determining whether the construed claim reads on the accused product is for the finder of fact.”); Modine Mfg. Co. v. U.S. Int’l Trade Comm’n, 75 F.3d 1545, 1554 (Fed. Cir. 1996) (whether claim limitation requiring diameter of “about 0.040 inch” embodied held a matter of “technologic fact”); see also Abbott Labs. v. Baxter Pharm. Prods., Inc., 471 F.3d 1363, 1368 (Fed. Cir. 2006) (where result is the same under any reasonable construction, “we need not construe [the disputed] phrase with numerical exactitude.”).

Then there was the claim term "transverse holes," where again, the majority opinion was that the term was not limited to the disclosed preferred embodiment.

The district court defined “transverse holes” as “holes across the butt portion of the nail.” Stryker argues that this claim term should be limited to holes that are perpendicular to the nail shaft, excluding from the claim scope holes that are tilted so that one end of the hole is vertically offset from the other end. Again, this argument is an improper attempt to read a feature of the preferred embodiment into the claims as a limitation.

The dissent by Judge Moore on claim construction of "transverse holes" was answered in the majority opinion.

The dissent states that the specification language which discloses only perpendicular holes should be determinative of the claim scope... [W]hile the dissent emphasizes the fact that there are three references to “perpendicular” holes in the specification, its argument is ultimately premised on characteristics which the patentee has attributed to a single preferred embodiment. In the context of this patent, such an argument must be contradicted by “our repeated statements that limitations from the specification are not to be read into the claims.” Comark, 156 F.3d at 1186; see also id. at 1187 (“[T]he language that [the defendant] argues should limit claim 1 is clearly found in the . . . patent’s description of the preferred embodiment. It is precisely against this type of claim construction that our prior case law counsels.”).

By highlighting the specification phrase “each of which is defined” and by describing that phrase as “important[],” Dissent at 5, the dissent appears to suggest that the patentee has in some sense imposed a limiting definition upon the word “transverse.” But the use of the word “defined” here does not imply a lexicographic definition, especially not a definition of “transverse” to mean “perpendicular.” Instead, the statement that the holes of the cited embodiment are “defined on . . . an axis” merely introduces the useful abstract concept of a “hole axis,” later employed in the claims to describe the orientation of the holes with respect to each other.

But Judge Moore's dissenting arguments, preferring a narrower construction, do ring with merit, albeit trashing the district court's offhandedness is waylaid moot by appeals court de novo review of claim construction.

I am troubled by the district court’s clear reliance on a common English language dictionary, which was published ten years after the ’444 patent issued to construe the term “transverse holes.” During the claim construction hearing, the court explained that the dictionary would be “an aid to our work.” The court not only used the dictionary as an “aid,” but actually utilized the dictionary definitions as the starting point when defining each of the disputed claim terms. Moreover, the court seemed to disregard the briefs in favor of off-the-cuff attorney argument during claim construction.

If anything, Judge Moore's dissent on the claim construction points to current caprice. Hal Wegner totes the stats on intra-circuit claim construction dissents as evidence.

Today's 9 per year [claim construction dissents] and the pre-Phillips [v. AWH CAFC ruling] 4.5 per year numbers dwarf the Markey Period average of 0.7 per year for the first decade of the court's existence (1982-1991)

Stryker was found willful for being warned by its own counsel of potential infringement, then getting a clearing opinion as useful as toilet paper. The appeals court leaves latitude as to whether a clearing opinion precludes willfulness.

At trial, Acumed presented evidence tending to show that Stryker did not seriously rely upon the later opinion letter from Augustin. For instance, Stryker filed with the FDA its application for the accused device on August 14, 2003, some months before Augustin transmitted the favorable opinion letter. Gregory Plakson, Stryker’s Director of Intellectual Property, testified at his deposition that he did not understand portions of the opinion letter and did not ask Augustin anything about the opinion. Acumed also presented evidence tending to show copying by Stryker, including that a Stryker consultant “confiscated” from an operating room a how-to chart detailing the assembly and insertion of Acumed’s product.

Favorable opinions of counsel normally present a well-grounded defense to willfulness, but the protection they afford is not absolute. “Those cases where willful infringement is found despite the presence of an opinion of counsel generally involve situations where opinion of counsel was either ignored or found to be incompetent.” Read Corp. v. Portec, Inc., 970 F.2d 816, 828-29 (Fed. Cir. 1992).

Willfulness is “not an all-or-nothing trait, but one of degree.” Comark, 156 F.3d at 1182 (quoting Rite-Hite Corp. v. Kelley Co., 819 F.2d 1120, 1125-26 (Fed. Cir. 1987)). Whether an infringer ignored the opinion of its counsel is, as part of the willfulness inquiry, also a question of degree. Evidence of the extent of that ignorance should be weighed by the factfinder together with the totality of the other circumstances surrounding the infringer’s culpability. See Comark, 156 F.3d at 1191 (evaluating opinion of counsel within a totality of the circumstances).

The injunction was vacated and remanded in light of the Supreme Court eBay decision.