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January 27, 2011

Mostly Stable

Warsaw Orthopedic successfully sued Globus Medical for infringing 6,530,929 and 7,008,422, which claim a spine stabilization device. On appeal, the claim construction was found stable, as was infringement, but the broad construction shook loose anticipation JMOL.

Warsaw Orthopedic v. Globus Medical (CAFC 2009-1525) nonprecedential

Limiting claim scope to a disclosed embodiment comes up time and again. The legally correct answer is given here, even though Judge Lourie goes against that grain. In this per curiam decision, with Lourie in the trio, they all decided to sing Kumbaya to the law.

Globus argues that the claims are limited to the single embodiment disclosed in the common specification. We disagree.

As this court has stated, "we have expressly rejected the contention that if a patent describes only a single embodiment, the claims of the patent must be construed as being limited to that embodiment." Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en banc). Here, the specification does not clearly indicate that the patentee intended to deviate from the ordinary, broad meaning of the various terms at issue and limit the scope of the claims to the disclosed embodiment; indeed, the specification clearly indicates that the claims are not so limited.

And so infringement stuck to Globus. But the broad construction made anticipation suspect.

On appeal, Globus argues that the claims as construed are anticipated by an endoscopic surgery performed in the mid-1990's by its expert witness, Dr. Paul McAfee.

A critical limitation in claims was at issue, as to who or what was doing an alignment. The claims allowed for either, and so Dr. McAfee, on videotape, demonstrated himself ahead of the patent.

But that was not all the disputed claims, which had limitations that "clearly distinguish these three claims from the McAfee prior art procedure in which the surgeon, not the instrument, performs the critical referencing and guiding functions." Those three claims were valid.

Affirmed-in-part, reversed-in-part, and remanded "to determine if the calculation of damages must be reevaluated in light of the modification of the judgment."

Posted by Patent Hawk at January 27, 2011 9:33 PM | Claim Construction


magic words:

"indeed, the specification clearly indicates that the claims are not so limited."

Posted by: Pedantic Pete at January 28, 2011 4:41 AM