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“incapable handling her own affairs or society.” unable to function Smith- [in] CORPORATION, NORIAN (internal Haynie, 155 quotes F.3d at 580 Plaintiff-Appellant, omitted). emphasized These courts diagnosis even a standing severe tolling. alone will warrant See Melén CORPORATION, STRYKER (“It dez-Arroyo, 273 at 38 is clear Defendant-Cross merely a diagnosis to establish such Appellant. depression enough.”). as severe is not 02-1490, 02-1506, Nos. 02-1507. generalized We believe these standards govern of mental should claims incom- United of Appeals, States Court Therefore, obtain petence. the benefit Federal Circuit. equitable tolling, a veteran must show 6, 2004. April
that the failure to the direct file was result aof mental illness that rendered him in-
capable thought of “rational or deliberate *3 rapid set- preparing A method composition ca- calcium
ting in a rapidly setting up viable pable of host, compris- method mammalian said ing: mixing dry precur-
combining with calcium producing phos- sors composition, pre- mineral said phate comprising a source cursors *4 source free of phosphoric and a acid Edmonds, Poissant, & Brian M. Pennie water; uncombined York, NY, LLP, argued plain- of New for precur- combining said combined With him on brief were tiff-appellant. pH a lubricant at a in the sors with Eric Stops. L. Malone and C. Of Daniel 6-11, said lubricant range of wherein Bretscher, was Carl Pennie & Ed- counsel a comprises member selected from LLP, Washington, of DC. monds and consisting phosphate group McAndrews, Held & Gregory Vogler, J. and from about 15 to 70 carbonate is Ltd., IL, Mallow, Chicago, argued percent composi- the total weight him With appellant. defendant-cross tion; Timothy Malloy, J. Sandra the brief were rapidly com- setting to form a flowable Frantzen, and L. Abramic. A. John position. NEWMAN, Judge, Before Circuit comprising 7. A bone tissue ex vivo FRIEDMAN, Judge, and Senior Circuit according composition prepared to the SCHALL, Judge. Circuit claim 1. method making repair, A method for bone 8. NEWMAN, Judge. PAULINE Circuit introducing method at comprising: said Corporation charged Stryker Norian composition repair, bone site Corporation infringement with of Norian’s the method of prepared according to (the 5,336,264 No. United States Patent 1. claim No. patent) '264 United States Patent (the 6,002,065 Trial patent). '065 was held The kit patent containing '065 for a jury part in in to the bench. part ingredients produce that are combined for the The United States District Court setting phosphate com- rapidly calcium Northern District of California held position. The in suit are: claims infring- in suit invalid or the claims are a calcium preparing phos- 8. A kit for judgment affirm to the ed.1 We as mineral, phate consisting kit of: said as to '065 '264 and reverse at least one calcium source and patent. acid phosphoric least one source free dry as ingredi- of uncombined water BACKGROUND ents; and repair The '264 is directed to the consisting of water and a a solution rapidly or teeth certain set- of bones phosphate, where the concen- sodium compositions. At ting phosphate in phosphate of said 7, tration sodium 1, are claims issue from 0.01 2.0 M patent: ranges said water (N.D.Cal.2002). Corp., Corp. Stryker 1. F.Supp.2d (3) pH filing patent; has a in the date the '264 claims and said solution to 11. range ground about are and 8 invalid on (4) obviousness; according to claim where- if the '264 The kit 9. (cid:127) phosphate present said sodium damages payable. were no are valid On ranging at a concentration said water motions, post-trial grant- court from about 0.05 to 0.5 M. ed as a of law to matter set according The kit to claim aside the verdict on the issue of antic- pH said solution has wherein ipation, holding the claims range from 7 to 9. about anticipated. are not The verdicts on all sustained, other and a grounds were new un- period For from December 1998 trial was denied. sold a mixture til October phosphate
tetracalcium dicalcium CLAIM CONSTRUCTION with the association trade- BoneSource®, in- accompanied by mark The district court instructed the as to obtain the structions sodium user following meanings to the of various terms from phosphate component independent an in the claims: The term “phosphoric acid *5 it with Bone- source and combine the means “an chemical source” acidic that “ a rapidly setting mixture to form Source® of phosphate.” acts as a source ‘Calcium Stryker began In cement. October means a compound source’ chemical or a kit con- to market BoneSource® that that substance includes a source of calci- phosphate component tained the sodium as um.” term mixing’ “The ‘combined with as the of tetracalcium phos- well mixture powders that the are stirred to- [means] phate phosphate; and dicalcium the kit that gether they thoroughly so are inter- provided combining for also instructions mingled.” parties “The agree the lu- a components spatula mixing the and a pH bricant must have between six and them. eleven, a phosphate and must include or Stryker “ against Norian filed suit in Jan- ‘Rapidly setting’ carbonate.” means 2001, uary charging infringement willful calcium phosphate composition the patents. Stryker pre- the '264 and '065 immediately, may usually harden almost of noninfringement, sented counterclaims maturing process take at the should least invalidity, unenforceability. and dis- The minutes, usually eight two about minutes held, summary court motions trict on minutes, thirty usually than and not more (1) Stryker infringe judgment, that did not twenty-five not than about minutes.” more (2) patent; '065 in- the induced that the “The term ‘flowable’means result- 1, 7, and 8 of '264 fringement claims the fluidity ing composition has sufficient to be (3) valid; if the were claims and through syringe, packed administered inequitable by was not conduct Nori- there paste.” used as patent procurement. an in the The court claims, remaining the and the construed only claim disputed The construc concerning patent issues the '264 were “phosphoric tion concerns the term acid to a jury. tried source.” The district court observed that reading “the natural of the term most (1) 1, 7, The found claims and acid be a source ‘phosphoric source’ would '264 are invalid acid,” phosphoric but held that “that is ground anticipation document way not the term is defined Abstract; called the 1991 IADR Extended (2) specification.” “phos The held that subject matter claims and 8 “an phoric was not invented others source” means acidic chem- before acid (“The (Fed.Cir.2001) 242 F.3d phosphate,” as a source of ical that acts specification are directed to the invention is explaining that claims acid “phosphoric they clear that the term do specification; makes described neutralizing phos- an “acidic source” is meaning from the context removed including arose.”). acid acid salts. phate source” they a term from which Whether required by agree meaning that this We subject in a claim is appearing which specification, states: beyond general limitations abstract in substan- composition The formed context meaning is determined tially stages: stage which two a first specification, the invention described mixing and involves mechanical intimate history, prior art. prosecution source, e.g., milling a calcium tetracal- Indus., Co. v. Consol. See Toro White phosphate, phosphate, cium tricalcium Inc., (Fed.Cir.1999); 199 F.3d carbonate, oxide, or calcium Corp. v. B.P. Chems. Hoechst Celanese substantially acid phosphoric source (Fed.Cir.1996). Ltd., 1575, 1578 water, desirably hav- free of uncombined district court observed phosphate ing protons per least specification “phosphoric the terms uses hydra- 1 water of not more than about source,” neutralizing phos- “acidic acid molecule, and, in per tion addition other source,” phate phosphate and “calcium additives; stage a second optional interchangeably, illustrating acid source” ... mixing provide which involves orthophosphorie such materials with acid product, to a calcium up final which sets phosphate. The district and monocalcium mineral, e.g., hydroxyapa- court’s claim construction accords with the tite, proper- mechanical having desirable *6 specification. in descriptions chemical the ties. contradictory appears No information in stage The the mechani- first involves patent prosecution; fully the record mixing primary cal of the calcium supports district court’s construction. phos- The neutralizing sources. acidic “a phosphoric confirm that acid We will be free of uncombined phate source phosphates source” means acidic that are may orthophosphorie water and be acid of the phosphoric component sources of crystals phosphate or monocalcium mo- composition. nohydrate Ca(H2P04)2-H20 or another acid source itself '264 PATENT VALIDITY —THE e.g., or in monetite.... combination correctly The jury was instructed 3, col. lines 7-29. party seeking patent that a to invalidate a meaning The of a technical term convincing must do so clear evi in in a claim is determined accor Am. v. dence. Hoist & Derrick Co. Sowa usage specification, dance with its in the Inc., 1350, (Fed.Cir. Sons, & prosecu appropriate by elaborated if 1984). history tion and with due consideration to in usage the field of the invention. A A. Obviousness in a patent technical document has term 7,1, and 8 jury The found claims of that it would be meaning understood on ground the '264 invalid of by persons knowledgeable field obviousness; the district court denied No A prior of the invention art. post-trial motions on this issue. rian’s We properly technical is not removed term jury verdict to determine from its to seek mean review context order Netword, ing. Corp., See v. Centraal whether there was substantial evidence to LLC Brown, 12, col. 22-32. findings necessary Comparing of fact to estab- lines support teaching this with Norian’s claim invalidity of ground on the obvious- lish Ca4 (P04)20 is a “calcium source” and evidentiary ness, with due attention to CaHP04 a acid of “phosphoric is source free Plastics, LNP Inc. v. Eng’g burdens. See (cid:127)2H20 water”; and for Spe- uncombined Brown’s Mills, Inc., 275 F.3d Miller Waste percent weight Ca6(P04)3 cimen 6 the of (Fed.Cir.2001) (“This a reviews OH is zero as shown Table II. Brown’s obviousness, jury’s ques- conclusions Thus, teaching of gram Brown’s “[o]ne law, deference, tion without equimolar containing mixture amounts of fact, underlying findings explic- whether Ca4(P04)20, appro- and the verdict, CaHP04-2H20 implicit or within the for sub- priate weight percent Ca5(P04)30H” evidence.”); Studs, stantial Inc. Sun reasonably could be found to a mixture Inc., Equip. Leasing, ATA “dry precursors” in claim 1. recited (Fed.Cir.1989) (reviewing the verdict A jury reasonable could have found that in light proof). of the burden of combining Ca4(P04)20 the mixture of jury held the claims invalid on the The 0.5 ml mM with of 20 CaHP04-2H20 H3 33,161 (Brown) Patent basis U.S. Re. by Brown, P04, described constitutes as or in taken alone combination with U.S. “combining precursors said with combined 5,092,888 (Iwamoto). Patent No. “a comprising a lubricant” member select- dry acknowledges that teaches the Brown group consisting ed from the of phosphate claims, argues but components testimony note and carbonate.” We Brown neither the nor the Iwamoto refer- Stryker’s expert Dr. Nancollas that H3P04 ence or a lubricant suggests discloses com- acid, phosphoric phosphoric and that prising phosphate or carbonate. “phosphate acid Trial Tran- solution.” argues that a reasonable 1214-15. script at could alone, could have found either Brown reasonably that in Brown have found Iwamoto, Brown combination weight percentage of the lubricant provides the motivation needed to include as with the overall com- compared solution out, Stryker points a lubricant as claimed. position range is within the 15-70% *7 Nancollas, testimony based on Dr. the of claim 1. Table II of Brown states that Example that in Specimen 6 5 of the 22 min- setting 6 has a time of Specimen every the step Brown reference shows of utes, scope “rapidly the which is within of 1, with ex- method of Norian’s claim the phrase by as the was construed setting” ception pH of range of the the lubricant. the district court. Example
Brown’s 5 reads: Example specifically Brown’s 5 does not in 6-9 Table II Specimens shown were lubricant, pH state the of the which is prepared by Ca4(P04)20, grinding CaH- an as a solution of acid illustrated dilute P04-2H20, Ca5(P04)30H and to a (20 mean However, H3P04). mM Brown does particle gram size of 5 im. One of a may the mixed precursors teach that be containing equimolar mixture amounts aqueous “in a that is either dilute solution Ca4(P04)20, Brown, of and the slightly slightly acidic or basic.” CaHP04-2H20 appropriate weight percent Ca5(P04)8 of 10, explains col. lines 45-47. Brown also mixed ml of may OH was with 0.5 20 mM added phosphate that monosodium be H3 paste This paste. liquid dry to form was to mixed with the to the be P04 setting powder “modify then allowed to harden. The in the ratio order to Ca/P apatite singular point.” of pH times as a function of seed con- and the solution’s 4-5, Brown, 11, tent II. col. 11-13. In addi- are shown Table lines 1328 teaches, Sys., Inc. v.
tion, Display tion. Advanced in the context of See Iwamoto Univ., 1272, 212 F.3d phosphate compo- of calcium State preparation Kent repair, (Fed.Cir.2000); Corp. for that “sodium Shatterproof sition useful bone Glass adjust Co., ... the phosphate can be added Libbey-Owens Ford Iwamoto, setting strength.” (Fed.Cir.1985). time and the Dr. col. lines 22-24. Nancollas testified at that counsel admitted trial Norian’s ordinary art that the level of skill this trial, discovered, in for preparing he had Transcript was Trial at and high, the during prosecution relating to ordinary would have person that a of skill factual reference he had made “a Brown teaching from understood Iwamoto’s teaching.” as to its Nori misstatement the the setting time would reduced an, at district F.Supp.2d 961. The at 1093. Be- presence phosphate. Id. not a court ruled that this was material the expressly cause Iwamoto discussed deceptive misrepresentation made 37-44, 1, lines Brown Iwamoto col. intent, remarking the Brown employed dry precursors Brown rejections subject of two was 55-60, example, an id. at col. lines during thoroughly explored prosecu was jury reasonably found that a could have However, per tion. person ordinary skill in the art would mitted the evidence of Norian’s misde- have motivated choose a lubricant been reference, and scription of the Brown as for the having pHa of 6-11 claimed jury determining “in instructed purpose obtaining rapidly setting cal- has whether carried burden phosphate composition. cium presumption validity [to overcome agree We with the district court that by clear in this convincing evidence] jury reasonable could found facts suf- case, you may proceedings consider provide convincing ficient to clear and evi- before examiner and extent dence of of claim We also obviousness pri- which and manner in which the agree with district court that reason- or or art was considered before able could have also held claim (alteration examiner.” Id. (bone tissue) (bone claim repair) original). explained pur The court obviousness, ground invalid on poses the parties as follows: taught both Brown Iwamoto purposes inequitable This is not for compositions useful as biomedi- conduct, already that the Court’s ruled cal materials. cements restorative case; but it is for purposes out Prejudicial B. Statements allowing strength to test the presumption goes pre- with the Norian moved a new trial on *8 sumption acknowledge I validity. obviousness, contending the issue of in overlap purpose, there’s some prejudiced jury its case was because the going inequitable it’s to be for but not was allowed hear evidence of Norian’s is, purposes. If that’s all it it conduct the examiner admitted misstatements to excluded; long be but so as the will concerning teachings of the Brown ref questioning relates to information the points summary erence. Norian to the may deciding jury legitimately use judgment granted by the court district be properly or not the examiner whether trial, holding inequitable fore conduct on or was misled as prior focused art had Thus not been established. Norian art, prior for purposes to the not argues prejudicial that was error to ad enforcement, wheth- purposes mit but this evidence. We review denial of a really not under- motion for a trial abuse of discre- er or the examiner did new
1329 ruling, he then Thus of validity stand what was that’s— the issue does not says findings proper. the case law that’s warrant of whether the examiner “really did what understand he was rul Norian, transcript at quoted Trial ing.” Trial transcript quoted in 252 at 960. F.Supp.2d Norian, 252 F.Supp.2d Introspec at 960. argues that Norian accordance speculation tion into the examiner’s Co., Magnivision, with Inc. v. Bonneau understanding of art prior or the com (Fed.Cir.1997), 115 F.3d 956 district pleteness or correctness of the examina improper. court’s actions were objective tion process part is not states that absent evidence sufficient to review of v. patentability. See Kahn Gen premises establish factual of inequita Corp., eral Motors conduct, ble evidence as to what the exam (Fed.Cir.1998) (the presumption validity might iner have believed about the prior change does not even when evidence not art arguments presented based on flawed previously before the examiner present is unduly can applicant, prejudicial trial). ed at Misleading statements not In Magnivi should be admitted. patent if applicants, intentionally made and sion this court stated: patentability, material to can produce un examination, lapses during Procedural enforceability, invalidity. not occur, they should not provide do We conclude that grounds invalidity. proof Absent instructing jury erred that the conduct, inequitable the examiner’s or validity presumption of varied with the applicant’s compliance absolute jury’s view whether the examiner be patent the internal rules of examination applicant’s lieved the or misstatements patent becomes irrelevant after has “properly otherwise did not on the focus issued. However, prior art.” the district court F.3d at Norian is correct that states, contradiction, without that no ob presumption validity subject not jection was made to this instruction. to being by “procedural diluted lapses” Norian, F.Supp.2d at 960. It is rare during prosecution. Similarly, Id. flawed appellate granted indeed for relief to be prosecution arguments not do affect objection when no was raised at trial. See validity, they or ques- whether not raise Co., Socony-Vacuum United States Oil inequitable tions of conduct. 150, 238-39, U.S. S.Ct. issued, After a validity has (1940) (“[Counsel L.Ed. 1129 for the de objectively prior determined based on art silent, remain fense cannot as rule inter requirements of patentabili the other pose objections, no and after verdict has ty. may of estoppels There course be been for the returned seize first time generated by prosecution amendment and point the comments to the argument, presence “strength” but the improper prejudicial.”). were The dis validity of the presumption of does trial, stressing trict court denied a new inquiry warrant into the examiner’s under objection that no was raised. competence standing gullibility. or See *9 circumstances, Corp. v. Brooktree Advanced Micro De Under such vices, Inc., (Fed.Cir. 1555, F.2d 1574 question 977 devolves into “whether an error 1992) (a valid, in patent presumed part the conduct of the trial that occurred patent expertise because of the examin was have grievous so as to rendered Co., DMI, presumption they ers and the that trial v. & unfair.” Inc. Deere (Fed.Cir.1986). 421, jobs properly). done their In 802 F.2d 427 Cir.1988) (“dissemination public objection acces to the instruc- absence tion, entirety sibility keys legal of the are view of to determina patent prosecution, as discussed prior tion whether a art reference was court, 102(b) persuaded ]”); are not § district we ‘published’ 35 U.S.C. [under prejudicial (Fed.Cir. or the trial un- Hall, 897, the error was re 781 F.2d In fair. The district court’s denial Nori- 1986) accessibility is “the touch (public an’s motion for a new trial is affirmed. determining whether a reference stone ‘printed a bar un publication’ constitutes Anticipation
C. 102(b)”). § der U.S.C. 7,1, The found that claims The district court cited the evidence that invalid patent and 8 of the were based (1) Chow, a Dr. co-author the Abstract a 1991 As anticipation by International testified that he had attended the who (IADR) Ex sociation for Dental Research meeting along copy IADR and had taken Abstract, tended Number entitled given meeting of the Abstract to be to a “Composite Phosphate of Calcium Cement not he organizer, could recall whether at- Setting and Protein Reac Bioadhesive— not presentation tended could re- tions, Compressive and Diametral Tensile copies call of the were whether Abstract Strength.” agreed Both that the parties (2) out, to actually available hand Dr. '264 invention described the Ab was Tagaki, another co-author who testified stract; the issue was whether the Abstract presentation, he attended had was art,” is, “prior was “described in a availability of questioned not about the year printed publication” more than be Although testimony Abstract. there was filing fore the date. See 35 U.S.C. general it was practice IADR (“A 102(b) § person shall be entitled to meetings out presenters hand ab- (b) patent unless ... the invention was attendees, stracts to the lack interested publica in a patented printed or described availability evidence of actual substantial country foreign tion in this or in adequately supports Abstract country, public use or on sale in more this conclusion that court’s dissemination year prior than one to the date of the Abstract was not established. That hold- application in the United ing is affirmed. States.”). is a prior Whether document publication question is a of law. See Read Inequitable D. Conduct ing Energy & Bates Co. v. Baker Constr. court granted The district Norian’s mo- (Fed.Cir. Res. Corp., 649-50 summary inequita- judgment tion for 1984). had ble conduct not been established. argued that the Abstract appeal challenges cross this 102(b) § did not meet the criteria of be ruling. only upon cause it was available individual may A un rendered authors, request to the and that such re applicant, if an intent enforceable quest and dissemination had been examiner, or deceive the fails mislead granted shown. Nori disclose material information or submits an’s motion for as a matter of materially information false PTO law, ground on the that there was not clear during prosecution. Scripps Clinic & Research convincing evidence that Abstract Genentech, Inc., Fou nd. F.2d actually was available at the IADR meet (Fed.Cir.1991); Kingsdown 1573-74 ing. See Constant v. Advanced Micro- Consultants, Hollister, Inc., (Fed. Inc., Devices, Med. Ltd. v. *10 (Fed.Cir.1988) (en a spatula, recite the could not claims be banc). materiality decep and infringed When both as a matter of law. by intent established clear tive have been parties dispute The do not that evidence, convincing and decision the kit BoneSource® all of contains the inequitable conduct is ultimate issue of elements set forth in claims 8-10 of the the court.
within discretion the district plus spatula. The district subject decision to re discretionary A claim signal court held that the “consisting to “it was based view determine whether nothing of’ means that can included in be clearly finding erroneous of fact or a claimed, kit beyond the what is and there law, misinterpretation misapplication Stryker’s infringe fore that kit cannot as a judgment.” or manifested a clear error of matter of is a “Consisting law. of’ term of Fosbel, Anonyme Glaverbel Societe & Inc. meaning convention that Inc., &Mktg. Supply, v. Northlake 45 F.3d only claimed invention what contains (Fed.Cir.1995). 1550, 1557 expressly set forth in the claim. See Ve ante, attorney mentioned As Int’l, Corp. hicular Techs. Titan Wheel prosecuted '264 application who testi Inc., (Fed.Cir. 212 F.3d 1382-83 trial, that while for the preparing fied he 2000). However, “consisting while of’ lim that he had discovered some statements invention, its claimed it not does limit to distinguish made the examiner to aspects to unrelated the invention. It is appeared Brown reference inaccu necessary thus to determine is limit what attorney rate. The had told the examiner by “consisting of’ phrase. ed Brown combining did disclose calcium sources with the acid sources in a “Consisting of’ in claim as used mixture, dry but trial he stated that an limits the kit claimed chemicals and example in the Brown did reference teach chemicals; is, no other kit “con dry mixture followed addition of wa of’ only sists the chemicals described as slurry. Stryker argued ter to form a contained the kit: the erroneous statement to the examiner 8. A preparing kit for a calcium miner- constituted inequitable conduct. The dis al, consisting said kit of: court trict observed that the Brown at least one calcium source and at rejections by had twice been the basis of phosphoric least one acid source free of examiner, import had been dry ingredients; water as uncombined “significantly actively The debated.” deceptive court held that was not intent consisting solution and a of water convincing established clear and evi sodium phosphate, where the concentra- agree that a genuine dence. We issue as tion of said sodium said deceptive had intent not been estab ranges water from 0.01 2.0 M lished, thereby ruling precluding ineq pH said has a range solution judgment uitable conduct. The on this about 6 to 11. is affirmed. issue containing a kit specified invention is INFRINGEMENT —THE '065 PATENT chemicals, explicitly claims are limited in that no other chemical can be granted
The district Stryker’s mo- composition. included See In re summary tion for non-in- Gray, fringement patent, holding of the '065 C.C.P.A. (because (1931) composition kit
because BoneSource® contained a chemical spatula, and Norian’s '065 claims did not term claim used the “consists” was *11 Norian, Stryker’s not that was alloy to of silver and
“therefore drawn an elements”). exculpato- an burden to come forward with other While indium without presented not ry opinion, when Norian had “consisting permits no other the term of’ kit, prima infringement. case of willful part is not of spatula in the chemicals facie this Norian no evidence on issue that is Man offered the invention described. Cf. The district court held Demag Corp. Engineered, its case-in-chief. nesmann Prods., patentee initial is on the to that the burden Metal 1282-83 (“The (Fed.Cir.1986) presence infringement. of additional ele evidence of willful present is if all claimed ele ments irrelevant Stryker argues Norian that because did struc present are in the accused ments present that it had obtained not evidence ture.”). counsel, jury exculpatory opinion an undisputed It is BoneSource® properly could have inferred as kit contains the same chemicals set opinion had such an or that not obtained patent. forth in claims 8-10 of '065 any it did obtain was unfavorable. opinion pres- Infringement by is not avoided Corp. v. Norian cites Great Northern spatula of a for the has no spatula, ence Co., Davis & F.2d Core Pad chemicals, is irrel- interaction with the (Fed.Cir.1986) that fail- proposition for summary evant to the invention. The an counsel on the opinion ure to obtain reversed. We remand judgment is infringement sup- is to issue of sufficient proceedings respect further However, finding port a of willfulness. patent. initial of evidence presentation absent an Norian, by on the issue this burden OF INFRINGEMENT WILLFULNESS did arise. coming forward defense not presented Norian its case After evidentiary no presumption There is granted Stryk in-chief district court every infringement willful. Willful in- motion of willful er’s to dismiss issue fringement by simple not established 50. A infringement under Fed.R.Civ.P. infringement, though Stryker fact even grant a matter of as law stipulated knowledge it had review, plenary applying receives the same Co., patents. Ajinomoto Norian Inc. v. court, standard as that of the district viz. Co., 228 F.3d Archer-Daniels-Midland whether reasonable could have Cir.2000) (accused (Fed. in- 1351-52 reached a favor of Norian on verdict fringer’s knowledge of asserted question, presented by this on the evidence more, support without is insufficient Avionique, Norian. See Sextant SA v. willfulness). patentee The conclusion Devices, Inc., 817, 824, Analog culpa- must present threshold evidence (Fed.Cir.1999) (“We review a district There was no evidence that ble behavior. on a court’s decision motion JMOL de Stryker attorney-client privi- invoked standard.”). novo, reapplying the JMOL counsel, who, lege its according as to may granted plaintiffs JMOL be after the Stryker, deposed had listed been was reasonably case when the could Norian, along as a with three witness presented. find willfulness on the evidence issue, other on this none of witnesses whom called Norian. was argues willfulness court summarized: Stryker provided could found because copying present- was opinion no that it had relied on an No evidence of evidence an not in ed. No evidence of failure obtain counsel that activities were opinion presented. of counsel was No fringing. The district court ruled that the to whether or presented willful evidence was as proving infringement burden was *12 Stryker had acted it reasonably part not once from that of opinion the court’s that acquired patent. knowledge grant reverses the district court’s sum- of mary judgment non-infringement of of Transcript at A013579-80. claims 8-10 of the patent. '065 affirm ruling. the district We court’s question Removal from the error;
under Rule 50 was not we affirm' I. grant JMOL on this issue. patent
The '065 kits for prepar- claims DAMAGES ing minerals. The dis- granted summary trict court judgment of expert Norian’s that a testified reason- non-infringement in Stryker favor of after royalty 15%, able would have been while phrase construed the “consisting of’ in Stryker’s expert testified to a reasonable independent claim patent 8 of the as a royalty 3%. The found that dam- closed ages phrase had not transition that proved been as to the '264 limits the patent, scope and the court upheld having this of claim 8 to only kits However, finding. requires statute components chemical enumerated in the damages to a in a claimant successful claim and no other components. Because patent infringement shall suit not be less spatula, accused device includes an than royalty: reasonable additional mechanical component, the court § Upon finding U.S.C. for the that Stryker concluded infringe. does not claimant the court award shall the claim- Corp. Stryker Corp., No. C 01- damages ant adequate compensate for (N.D.Cal. 20, 2001). Apr. WHA infringement, but no event less appeal, On the court determines that the royalty than reasonable for the use phrase “consisting transition of’ speaks by made of the infringer, invention only types of components listed in together with interest costs as fixed claim noting 8. It does so after that all of the court. in claim elements chemical are com- jury’s finding damages of no cannot result, ponents. As a the court concludes However, supported. af- because we have patentee that the drafted the claim to cov- invalidity firmed the verdict of of claims er kits that include the enumerated chemi- and 8 of the '264 this issue- cal components, but no other chemical remand, as to moot the '264 patent. On However, components. the court further damages patent as to the '065 may be that claim concludes 8 does not exclude ascertained. additional, unrecited components that are Costs unrelated irrelevant to the invention. n party Each shall bear costs. construction, Based upon claim ’ kit, court PART, Stryker’s holds that accused AFFIRMED IN REVERSED which undisputedly includes the listed IN PART AND REMANDED. i.e., components chemical plus spatula, SCHALL, Judge, Circuit concurring-in- an unrelated component, mechanical in- part, dissenting-in-part. fringes 8. In light claim claim con- struction, the court reverses the district join part I of the court’s opinion grant summary judgment court’s that affirms the of non- the district 1, 7, infringement claims and 8 of claims 8-10 the '065 are invalid reason of proceedings obvious- and remands for However, respectfully ness. I damages. dissent components the chemical intended to limit
II. components. any types other in- with the interpretation begins Claim result, Norian contends that As a i.e., evidence, the claims them- trinsic infringement by selling a kit cannot avoid and, if in selves, description, written *13 has the chemical that all of enumerated history. evidence, the CCS prosecution merely also it in- components because Fitness, F.3d Corp., v. Brunswick 288 Inc. i.e., compo- spatula, a a mechanical cludes (Fed.Cir.2002). 1359, The terms 1366 part, Stryker argues For its that nent. “heavy presump- a used in a claim bear the they ordinary meaning properly the district court construed tion” that have the those words phrase that would be attributed to to limit claim 8 to those disputed I the art. Id. persons skilled in relevant only that the enumerated items. kits have 8, claim begin language the which with such, urges us to affirm the district As as follows: provides summary judgment of non- grant court’s phos- a calcium preparing 8. A kit for the infringement of claims 8-10 of '065 mineral, consisting kit of: phate said patent. at calcium source and at least one law it clear Our case makes acid source free “ phosphoric least one such as ‘con phrases ‘closed’ transition dry ingredi- water as of uncombined to sisting any of are understood exclude ents; and elements, ingredients speci or steps, consisting of water and solution Indus., in claim.” Inc. v. fied the AFG where concen- phosphate, sodium Co., 1239, Inc., 239 F.3d 1245 Cardinal IG phosphate in tration said sodium (Fed.Cir.2001); see Manual Patent also from 0.01 to 2.0 M ranges said water (8th Examining § Procedure 2111.03 pHa in the and said solution has ed.2001). Thus, we held that “con 6 to 11. range about sisting phrase of’ a narrow that limits 12, ll.12-22.1 patent, col. '065 scope a claim to the enumerated parties dispute On mean- appeal, Georgia-Pa in that claim. elements See
ing phrase “consisting par- of the of.” In Co., Corp. Gypsum v. United States cific ticular, they pat- dispute effect (Fed.Cir.1999) 1322, 195 1327-28 preamble in the phrase use of the entee’s Examining Patent (quoting Manual of argues of claim 8. Norian (6th ed.1997)); § Procedure 2111.03 Vehic too narrow- “consisting court construed of’ Int'l, Corp. ular Techs. v. Titan Wheel to ly by holding it limits the claim (Fed.Cir.2000) Inc., 212 F.3d those items and kits the enumerated (“In terms, simple a drafter uses the Instead, argues that no others. phrase ‘consisting of mean T claim what to phrase “consisting only of’ should ”). nothing follows else.’ components to serve to limit the chemical view, my errs in holding In claim, in those should not listed but phrase “consisting that Norian’s use any compo- serve to exclude mechanical chemical, only of’ limits but not mechani- argument nents. Norian bases its cal, components. precedent Our indicates only compo- fact that claim 8 lists chemical nents, only language components. that such limits all suggesting patentee according to where- as 10. The kit claim 1. Claims 9 10 read follows: range pH said has a in the from in solution according kit claim wherein 9. The phosphate present said about to 9. said sodium in ranging patent, at a from water concentration col. ll. 23-26. 0.05 0.5 M. about Techs., Moreover, In Vehicular Norian amended claim 8 dur- ing prosecution addition, of the '065 creating to claim a as Norian chose kit public. clear record for the Exam- opposed composition a chemical rejected pending iner claims as obvious 8-10, generally claims and a kit is under light prior art Iwamoto reference. packaged stood to be set collection Iwamoto discloses in claim 1 a colloidal recognized related items. Norian even solution containing a calcium and a source items, can that a kit include mechanical source in sodium phosphate by stating such packaging, as claims In response rejection, solution. to the No- dry of the '065 “said 26) (original rian amended claim claim ingredients present and solution are changing “comprising” term “con- *14 separate containers.” '065 col. sisting essentially finally of’ and “con- to ll. 18-19; 12, ll. col. 2-3. of.” sisting The explained inventor the by stating last amendment it would important I think it is for us to construe question leave “no that the claims exclude “consisting the of’ in claim in language 8 scope from their any kits in the which prior line with our jurisprudence because liquid is a colloid or sol.... In other of the notice public function a words, the of present ap- claimed kits the and Springs its claims serve. Window plication are to limited kits in the which Indus., LP, v. Fashions LP Novo F.3d 323 setting liquid is a solution.” state- These (Fed.Cir.2003) (“The public 995 notice not, ments suggests, do as Norian alter the a patent prosecution function of effect of the amendment. history requires patentee that a to held above, In view the case law discussed what during prosecution he declares the a reasonable competitor reviewing claims A patent. patentee may his not state dur- 8-10 and the by amendments made Norian ing prosecution that the claims do not cov- distinguish the claimed from invention er a particular change device and then Iwamoto would conclude that the claims do position later party sue a who makes not cover kits that any contain items be infringement.”). that same device for yond specifically those listed in the claims. public patentee’s relies the a words Hockerson-Halberstadt, See Avia Inc. v. scope claims to determine the of the claims (Fed. Int’l, Inc., Group a strategy. form If business Nori- Cir.2000) (stating prosecution that “[t]he an by employing phrase erred “consist- history public constitutes a record of the ing of’ rather “comprising,” than patentee’s concerning representations thereby mistakenly acquired claims that claims, scope meaning and com intended, were not broad it as as it must petitors rely repre are entitled to on those Prods., bear consequences. Sage Inc. ascertaining degree sentations when Indus., Inc., Devon conduct”). lawful Norian over chose to (Fed.Cir.1997) (“However, as between prior by changing come the asserted art patentee who had a opportunity clear However, language claim so so, negotiate broader did claims but not do scope doing, excessively it narrowed the public large, and the at patentee Norian, patent. As amended who must of its bear cost failure reads, preamble pre of claim “A kit for protection seek for this foreseeable altera- mineral, calcium paring phosphate said structure.”). tion of its claimed I do not consisting kit of....” Norian could change meaning believe that we should protected against infringement itself of a well phrase established to save by amending defense mounted patentee from limit preamble decision to its claims. of claim 8 so that it read
instead, preparing “A kit mineral, compris- kit
phosphate said Alternatively, could have
ing. ...” preamble claim 8 so that it
amended instead, “A kit for a calci- preparing
read mineral, com-
um the chemical consisting kit of....” As
position said however, stands, Stryk- language
the claim rely on Norian’s use of
er was entitled to phrase “consisting to de- limiting of’ likely in- whether its kits would
termine
fringe claims. Norian’s view,
In be limited to my claim should (i) at least one calcium
kits that include phosphoric acid
source and least one dry as free of uncombined water
source (ii) consisting
ingredients and solution
water and least one sodium pH. Be- specified with a concentration and 1291. See also 302 F.3d genuine cause issue of material there no an regarding presence fact addition- kit, i.e., Stryker’s spatu- component
al
la, I is entitled believe that non-infringement as a matter Thus, decision I would affirm the law. granting Stryker sum-
mary non-infringement judgment of patent. of the '065
claims 8-10 reasons, respectfully I foregoing
For the
dissent. COMPANY,
MONSANTO
Plaintiff-Appellee, McFARLING, Defendant-
Homan
Appellant. 03-1177,
Nos. 03-1228. Appeals, States Court of
United Circuit.
Federal April
DECIDED: