Stryker Corporation v. Zimmer, Inc. , 837 F.3d 1268 ( 2016 )

United States Court of Appeals
for the Federal Circuit
______________________
STRYKER CORPORATION, STRYKER PUERTO
RICO, LTD., STRYKER SALES CORPORATION,
Plaintiffs-Appellees
v.
ZIMMER, INC., ZIMMER SURGICAL, INC.,
Defendants-Appellants
ZIMMER ORTHOPAEDIC SURGICAL PRODUCTS,
Defendant
______________________
2013-1668
______________________
Appeal from the United States District Court for the
Western District of Michigan in No. 10-CV-1223, Judge
Robert J. Jonker.
______________________
Decided: September 12, 2016
______________________
SHARON HWANG, McAndrews, Held & Malloy, Ltd.,
Chicago, IL, for plaintiffs-appellees. Also represented by
DEBORAH LAUGHTON, STEPHANIE SAMZ.
SETH P. WAXMAN, Wilmer Cutler Pickering Hale and
Dorr LLP, Washington, DC, for defendants-appellants.
Also represented by THOMAS SAUNDERS; REBECCA A. BACT,
MARK CHRISTOPHER FLEMING, Boston, MA; DONALD
2 STRYKER CORPORATION v. ZIMMER, INC.
ROBERT DUNNER, Finnegan, Henderson, Farabow, Garrett
& Dunner, LLP, Washington, DC.
______________________
Before PROST, Chief Judge, NEWMAN and HUGHES, Circuit
Judges.
PROST, Chief Judge.
This case returns to us on remand from the Supreme
Court of the United States. Halo Elecs., Inc. v. Pulse
Elecs., Inc., 136 S. Ct. 1923 (2016). In the original appeal,
Zimmer, Inc., Zimmer Surgical, Inc., and Zimmer Ortho-
paedic Surgical Products (collectively “Zimmer”) appealed
from the final judgment of the United States District
Court for the Western District of Michigan that U.S.
Patent Nos. 6,022,329 (“’329 patent”), 6,179,807 (“’807
patent”), and 7,144,383 (“’383 patent”) were valid and
willfully infringed.
We affirmed the jury’s findings that the patents were
valid and infringed, and the jury’s award of damages to
plaintiff-appellees Stryker Corporation, Stryker Puerto
Rico, Ltd., and Stryker Sales Corporation (collectively
“Stryker”). Stryker Corp. v. Zimmer, Inc., 782 F.3d 649,
653 (Fed. Cir. 2014). However, applying the then-
controlling test for willful infringement and enhanced
damages under In re Seagate Technology, LLC, 497 F.3d
1360 (2007) (en banc), we reversed the jury’s willfulness
finding and vacated the associated award of treble dam-
ages and attorneys’ fees. Stryker Corp., 782 F.3d at 660-
62.
Stryker petitioned for rehearing en banc, which this
court denied. Stryker then filed a petition for a writ of
certiorari in the Supreme Court. The Supreme Court
granted certiorari to determine whether the Seagate test
regarding willfulness and enhanced damages was con-
sistent with the Patent Act. Halo Elecs., Inc., 136 S. Ct.
at 1928.
STRYKER CORPORATION v. ZIMMER, INC. 3
In its decision, the Supreme Court determined that
the Seagate test “unduly confines the ability of district
courts to exercise the discretion conferred on them.” Id.
at 1935. Because we decided the willfulness question
under the Seagate framework, the Supreme Court vacated
our prior decision and remanded the case for further
proceedings. Id. at 1935-36.
On remand, we recalled our mandate and reopened
the case. Because Halo was limited to the questions of
willfulness and enhanced damages, it left the judgments
on other issues undisturbed. For the reasons stated
below, we therefore reaffirm the jury’s findings that
Stryker’s patents were valid and infringed. In light of the
new willfulness standard articulated by the Supreme
Court, we also affirm the jury’s finding of willful in-
fringement. However, we vacate and remand the district
court’s award of treble damages. Finally, we vacate and
remand the district court’s finding that this was an excep-
tional case and its award of attorneys’ fees.
I
The patents at issue concern pulsed lavage devices.
Pulsed lavage devices deliver pressurized irrigation for
certain medical therapies, including orthopedic proce-
dures and cleaning wounds. The particular devices at
issue in this case are portable, battery powered, and
handheld. They include both suction and discharge tubes,
so they both spray fluid from an external source and also
suction off fluid and debris. These devices represent an
improvement over older pulsed lavage systems that
required a central power source and external mechanical
pumps, which meant that they needed to be wheeled
around the hospital.
Stryker and Zimmer are the two main competitors in
the orthopedic pulsed lavage device market. Stryker
began bringing battery-powered, handheld pulsed lavage
devices to the marketplace in 1993. That same year,
4 STRYKER CORPORATION v. ZIMMER, INC.
Stryker filed the application which eventually gave rise to
the patents at issue. In February 2000, the first of these
patents, the ’329 patent, issued. Later that year Stryker
sued another manufacturer, Davol Inc., for infringement.
That suit settled in 2001, and Davol took a license on
the ’329 patent. The ’807 patent subsequently issued in
January 2001, and the ’383 patent issued in December
2006.
Zimmer introduced its first portable pulsed lavage de-
vice, the Var-A-Pulse, in 1996. In 1998, Zimmer began to
develop a new design, which came to market soon thereaf-
ter as the Pulsavac Plus range of products. Zimmer’s
Pulsavac Plus products achieved a peak of $55 million in
annual sales in late 2007 before they were withdrawn
from the marketplace due to a product recall, after which
sales resumed in December 2008.
In 2010, Stryker sued Zimmer, alleging that Zimmer’s
Pulsavac Plus devices infringed various claims of
the ’329, ’807, and ’383 patents. The district court grant-
ed partial summary judgment in favor of Stryker, finding
infringement of the ’807 and ’383 patents’ asserted claims.
The question of whether Zimmer infringed the single
asserted claim of the ’329 patent, as well as Zimmer’s
invalidity defenses against all of the asserted claims,
went to trial. The jury found that the products infringed
claim 2 of the ’329 patent and that all of the asserted
claims were valid. The jury also awarded $70 million in
lost profits. It further found that Zimmer had willfully
infringed all three patents. The jury also found that
Stryker had marked substantially all of its products that
commercially embodied the patents-in-suit during the
period it sought damages, pursuant to 35 U.S.C. § 287(a).
In August 2013, the district court issued an order re-
jecting Zimmer’s motions for judgment as a matter of law
(“JMOL”) on various issues, affirming the jury’s verdict,
awarding trebled damages for willful infringement, find-
STRYKER CORPORATION v. ZIMMER, INC. 5
ing the case exceptional and thus awarding attorneys’ fees
to Stryker, and imposing a permanent injunction. The
district court subsequently entered final judgment pursu-
ant to its order.
Zimmer appeals. We have jurisdiction under 28
U.S.C. § 1295(a)(1).
II
We turn first to Zimmer’s appeal on the issues of
claim construction, infringement, and validity.
Claim construction is an issue of law based on under-
lying factual considerations. Teva Pharm. USA, Inc. v.
Sandoz, Inc., 135 S. Ct. 831, 838 (2015). We review the
district court’s ultimate construction de novo, and any
underlying factual determinations for clear error. Id. at
840-41. In construing a claim term, we look at the term’s
plain and ordinary meaning as understood by a person of
ordinary skill in the art. Phillips v. AWH Corp., 415 F.3d
1303, 1313 (Fed. Cir. 2005) (en banc). There is an excep-
tion to this general rule when a patentee sets out a defini-
tion and acts as her own lexicographer. Thorner v. Sony
Computer Entm’t Am., LLC, 669 F.3d 1362, 1365 (Fed.
Cir. 2012). Infringement is a question of fact. Lucent
Techs., Inc. v. Gateway, Inc., 580 F.3d 1301, 1309 (Fed.
Cir. 2009). Invalidity by reason of anticipation under 35
U.S.C. § 102 is a question of fact. Atlas Powder Co. v.
Ireco, Inc., 190 F.3d 1342, 1346 (Fed. Cir. 1999). Invalidi-
ty by reason of obviousness under 35 U.S.C. § 103 is a
legal conclusion based on underlying facts. Allergan, Inc.
v. Sandoz Inc., 726 F.3d 1286, 1290 (Fed. Cir. 2013).
Zimmer has the burden to prove invalidity by clear and
convincing evidence. Galderma Labs., L.P. v. Tolmar,
Inc., 737 F.3d 731, 736 (Fed. Cir. 2013).
On the issues of infringement and validity that the ju-
ry decided, Zimmer appeals the district court’s denials of
its motion for JMOL. Generally, a district court grants
6 STRYKER CORPORATION v. ZIMMER, INC.
JMOL and sets aside the jury’s verdict if it “finds that a
reasonable jury would not have a legally sufficient eviden-
tiary basis to find for the party on that issue.” Fed. R.
Civ. P. 50(a). We apply the law of the regional circuit to
our review of the district court’s grant or denial of a
motion for JMOL. ClearValue, Inc. v. Pearl River Poly-
mers, Inc., 668 F.3d 1340, 1343 (Fed. Cir. 2012). The
Sixth Circuit reviews the district court’s decision on a
motion for JMOL de novo. Barnes v. City of Cincinnati,
401 F.3d 729, 736 (6th Cir. 2005). “Judgment as a matter
of law may only be granted if, when viewing the evidence
in a light most favorable to the non-moving party, giving
that party the benefit of all reasonable inferences, there is
no genuine issue of material fact for the jury, and reason-
able minds could come to but one conclusion in favor of
the moving party.” Id.
For the reasons stated below, we affirm the district
court’s judgment on the various defenses of non-
infringement and invalidity that Zimmer raises across the
three asserted patents. However, we also find that each
of these defenses was not unreasonable.
The ’329 Patent
The only asserted claim of the ’329 patent, claim 2,
describes features of a “pulsed irrigation surgical hand-
piece.” According to this claim, the handpiece comprises a
“hollow housing,” which includes a “handle,” and, in
relevant part in this case, “an electric motor spaced
between the top and bottom of said handle and located in
said handle” adjacent to an irrigation tube within the
housing. ’329 patent col. 22 ll. 5-7 (emphases added).
Zimmer contends that this limitation is critical for the
purposes of infringement because, as indicated by the
arrows below, the motor in its accused Pulsavac Plus
device is not located in the handle—rather, it is located in
the “nub” of the handpiece, the protrusion behind the
barrel.
STRYKER CORPORATION v. ZIMMER, INC. 7
Appellees’ Br. 11 (red arrows added).
During claim construction, Zimmer took the position
that no construction was necessary and that the claim
term “handle” could be understood as having its plain and
ordinary meaning to a person of ordinary skill in the art.
Stryker Corp. v. Zimmer, Inc., No. 10-1223, slip op. at 6
(W.D. Mich. Feb. 1, 2012), ECF No. 106 (“Claim Construc-
tion Order”). Stryker proposed to construe the term
“handle” as “a portion of a device designed to be held by a
hand or hands.” Id. The district court adopted Stryker’s
proposed construction.
Stryker argued that nothing in the patent’s specifica-
tion otherwise limited the meaning of “handle,” and that
its definition for “handle” was consistent with general
dictionaries. Zimmer argued that Stryker’s express
construction of the term, however, was too broad and read
out the specification’s consistent distinction between the
“handle” and “barrel” portions of the claimed device.
The ’329 patent generally describes various embodi-
ments, all of which comprise a “hand-held housing having
a handle and a barrel which extends from the upper end
of the handle.” ’329 patent col. 3 ll. 28-31. Zimmer fur-
ther supported its position with the language of claim 4,
which depends on claim 2. Claim 4 separately describes
8 STRYKER CORPORATION v. ZIMMER, INC.
both a “handle” and a “barrel,” which Zimmer argued
meant that the patentee maintained the distinction
between the two parts of the handpiece.
However, the district court ultimately agreed with the
Stryker that a device that met claim 2 did not need to
have a discrete barrel joined to the handle, since this
claim could cover wand-shaped devices that existed in the
prior art in which the entire handpiece functioned like a
handle and no separate barrel was joined at an angle.
The district court reasoned that since claim 4 is a depend-
ent claim, it could cover the pistol-shaped design de-
scribed in the specification, while claim 2 would more
broadly cover wand-shaped devices as well.
On appeal, Zimmer also raises the prosecution history
of U.S. Patent Application No. 08/559,133 (“’133 applica-
tion”), the parent of the application that issued as the ’329
patent. During the ’133 application’s prosecution, Stryker
sought to overcome a rejection of claim 39 based on a prior
art reference which described a pistol-shaped device with
a barrel and a handle. Stryker traversed the rejection by
arguing that the motor of the prior art handpiece was “not
in the handle or at an angle to the barrel.” Zimmer
contends that claim 39 included the limitation “locating
said motor in said handle,” which is the same limitation
at issue in the construction of “handle” in claim 2 of
the ’329 patent. Therefore, Zimmer argues, Stryker’s
statement disclaimed designs in which the motor is
located in the barrel or nub of a pistol-shaped handpiece.
See Gemalto S.A. v. HTC Corp., 754 F.3d 1364, 1371 (Fed.
Cir. 2014) (“[W]hen multiple patents derive from the same
initial application, the prosecution history regarding a
claim limitation in any patent that has issued applies
with equal force to subsequently issued patents that
contain the same claim limitation.”); Microsoft Corp. v.
Multi-Tech Sys., Inc., 357 F.3d 1340, 1349 (Fed. Cir.
2004); Elkay Mfg. Co. v. EBCO Mfg. Co., 192 F.3d 973,
980 (Fed. Cir. 1999).
STRYKER CORPORATION v. ZIMMER, INC. 9
Zimmer did not raise its prosecution history argument
during its claim construction briefing and the Markman
hearing before the district court. The district court indi-
cated that it would not alter the claim construction but,
nevertheless, determined that it would still consider this
argument in deciding Zimmer’s motion for summary
judgment of noninfringement. Stryker Corp. v. Zimmer,
Inc., No. 10-1223, slip op. at 3 (W.D. Mich. Nov. 29, 2012),
ECF No. 248 (“Summary Judgment Order I”). The dis-
trict court nevertheless denied Zimmer’s motion, finding
that the prosecution disclaimer was insufficiently “clear
and unmistakable” because claim 39 of the ’133 applica-
tion had additional limitations that were absent in claim
2 of the ’329 patent. Id. at 4-5.
The district court’s analysis was flawed, however, be-
cause this was not a case in which the “purported dis-
claimers are directed to specific claim terms that have
been omitted or materially altered in subsequent applica-
tions (rather than to the invention itself).” Saunders
Grp., Inc. v. Comfortrac, Inc., 492 F.3d 1326, 1333 (Fed.
Cir. 2007). 1 There was no difference in the language
1 The limitation at issue in the original claim 39 of
the ’133 application was, in full: “a handpiece housing
containing said pump and shell, said handpiece housing
being elongate [sic] and bent and comprising a handle and
a barrel, said barrel being open to and extending forward
from an intersection with the top of the handle at an
angle thereto, said hollow shell extending lengthwise
along and within said handle into said angled intersection
of said handle and barrel and locating said motor in said
handle remote from said angled intersection, said link
extending at said angle from said shell and handle for-
wardly into and along the length direction of said barrel,
said pump movable member extending along the length
10 STRYKER CORPORATION v. ZIMMER, INC.
describing the limitations as between the two claims at
issue, rather, the limitation of claim 2 was included
within claim 39. There is no reason why a disclaimer on a
limitation within a narrower claim would not apply to the
identical limitation within the broader claim, as the same
concerns about the prior art would relate to both. See,
e.g., Gemalto, 754 F.3d at 1371 (applying a common
disclaimer to both an independent and narrower depend-
ent claim containing the same term). 2 That said, the
district court did not err in rejecting Zimmer’s argument
as it related to claim construction, while still entertaining
it in the context of infringement. See SuperGuide Corp. v.
DirecTV Enters., Inc., 358 F.3d 870, 889-90 (Fed. Cir.
2004) (affirming the district court’s construction on the
grounds that a proffered alternative construction was
untimely raised). Therefore, we review Zimmer’s argu-
ment only as it relates to infringement.
Infringement is a question of fact, and we must give a
substantial degree of deference to the jury’s verdict. At
trial, Stryker presented evidence indicating that a medi-
direction of said barrel and being reciprocatingly driven
by said link in said length direction of said barrel.” J.A.
16672 (emphasis added).
2 This is unlike the case cited by Stryker and the
district court for the contrary proposition, Middleton, Inc.
v. Minnesota Mining and Manufacturing. Co., in which
the term at issue, “uniform” in the context of floor cover-
ings, would potentially have a different meaning if it
applied to the narrower claim—limited to smooth sporting
surfaces—and a subsequent, broader claim that contem-
plated other kinds of surfaces. 311 F.3d 1384, 1388-89
(Fed. Cir. 2002). Here, a limitation on the location of the
motor within the handpiece would mean the same thing
in the context of either claim.
STRYKER CORPORATION v. ZIMMER, INC. 11
cal professional could hold Zimmer’s Pulsavac Plus by the
nub behind the barrel, where the motor was located. In
addition, Stryker presented evidence that the barrel of
the Pulsavac Plus was called a “barrel grip” in an associ-
ated patent application, and the barrel included indenta-
tions that would allow the device to be used while held by
the barrel. Stryker also persuaded the jury that it was
reasonable to infer that if the nub behind the barrel was
also shaped such that it was at least capable of being
held, then it would be “a portion of the device designed to
be held by hand,” in accordance with the district court’s
construction of “handle” in the claim at issue. In light of
the evidence presented at trial as a whole, along with the
prosecution history, we do not find that “reasonable minds
could come to but one conclusion” that Zimmer did not
infringe claim 2 of the ’329 patent. Barnes, 401 F.3d at
736. Accordingly, we affirm.
The ’807 Patent
Infringement
Zimmer argues that the district court erred in grant-
ing summary judgment of infringement of the ’807 pa-
tent’s asserted claims. We review the district court’s
grant of summary judgment de novo. Dixon v. Univ. of
Toledo, 702 F.3d 269, 273 (6th Cir. 2012). “Summary
judgment is proper where there exists no issue of material
fact and the moving party is entitled to judgment as a
matter of law.” ETW Corp. v. Jireh Publ’g, Inc., 332 F.3d
915, 920 (6th Cir. 2003) (citing Fed. R. Civ. P. 56(c)). All
reasonable factual inferences are drawn in favor of the
nonmoving party. Id.
Zimmer’s argument on appeal centers on whether its
products include, as required for all the asserted claims,
“a front end for receiving the discharge tube and the
12 STRYKER CORPORATION v. ZIMMER, INC.
suction tube.” ’807 patent col. 27 ll. 35-37 (emphasis
added). 3 This limitation describes the interface between
the nozzles at the front end of the handpiece and the
nozzles of a removable tip that includes discharge and
suction tubes. Zimmer argues that the claim language
requires that there be male openings on the tip that fit
into the female nozzles on the handpiece. Therefore,
Zimmer contends that the accused devices do not infringe
because they are designed with female openings on the tip
that fit into tapered male nozzles on the handpiece. To
support its position, Zimmer relies on various dictionary
definitions of “receive,” which it argues all have some
variant of the verbs “to contain” or “to hold.” See Appel-
lants’ Br. 57. Zimmer argues that this meaning is con-
sistent with the specification, which discloses a single
embodiment in which the neck of the suction tube “seats
in” the drain tube—and, specifically, that this configura-
tion is designed to avoid “leakage of the fluid and material
as it flows in the drain tube.” ’807 patent col. 11 ll. 29-34;
see also id. fig.8.
As an initial matter, Stryker’s argument that Zimmer
waived a narrower construction of the term “receive” is
unavailing. The parties and the district court directly
addressed this issue during the summary judgment
proceedings. Moreover, unlike the dispute concerning the
meaning of “handle” in the ’329 patent, the district court
did not note any waiver and expressly considered the
scope of “receive” in evaluating whether Zimmer’s design
infringed. See Pfizer, Inc. v. Teva Pharm., USA, Inc., 429
F.3d 1364, 1377 (Fed. Cir. 2005) (contemplating “rolling
claim construction, in which the court revisits and alters
3 Stryker asserted claim 45 and certain of its de-
pendent claims.
STRYKER CORPORATION v. ZIMMER, INC. 13
its interpretation of the claim terms as its understanding
of the technology evolves”).
Stryker further argues that the specification provides
a broader disclosure of “an irrigation handpiece to which
complementary tips can be readily coupled.” ’807 patent
col. 1 ll. 10-12 (emphasis added); see also col. 2 ll. 45-47
(disclosing “a tip assembly [that] readily seals to a com-
plementary handpiece”) (emphasis added). Stryker also
points to Zimmer’s own lay witnesses, who admitted that
its Pulsavac Plus handpiece “receives” the tips. 4
The district court noted that, in its view, “Zimmer’s
reading of ‘receive’ is artificially narrow.” Stryker Corp. v.
Zimmer, Inc., No. 10-1223, slip op. at 8 (W.D. Mich. Nov.
29, 2012), ECF No. 247 (“Summary Judgment Order II”).
Instead, the district court reasoned that “[t]he word
“receives” in this context can only mean that one part of
the device connects directly with another part of the
device.” Id. Thus, the district court found that Zimmer
infringed. While it is a close case, we do not find that the
district court erred in granting summary judgment of
infringement based on the record before it.
Invalidity
Zimmer also appeals the district court’s holding that
the asserted claims of the ’807 patent were anticipated by
4 Stryker also argues that Zimmer’s invalidity ar-
gument relies on the prior art Var-A-Pulse device includ-
ing the “receive” limitation—even though it has the same
kind of tip assembly as the Pulsavac Plus. We note,
however, that nothing precludes Zimmer from arguing for
a narrower application of the limitation on the infringe-
ment context, while also arguing, in the alternative,
that—if the district court were to disagree—the patent
claim would be so broad as to be invalid.
14 STRYKER CORPORATION v. ZIMMER, INC.
its prior art Var-A-Pulse device, the predecessor of the
Pulsavac Plus. Stryker argues that the Var-A-Pulse
device does not anticipate because it is missing the “lock
assembly” limitation of the asserted claims, which require
that there be “a lock assembly mounted to the front end of
said body for releasably securing the discharge tube and
the suction tube to said body.” ’807 patent col. 27 ll. 35-
37. The district court adopted Stryker’s proposed con-
struction of the term “lock assembly” as “components that
work together to secure or fasten the tip to the hand-
piece.” Claim Construction Order at 16. In the Var-A-
Pulse device, the tip was attached to the handpiece in
such a way that the tip nozzles fit into interior housing
grooves at the front of the handpiece, which were then
held together by friction. Zimmer argues that under the
district court’s construction, the limitation was present in
the prior art because the nozzles were “secured or fas-
tened” when they were fit in the interior housing groove.
At trial, Zimmer presented evidence that included the
Var-A-Pulse’s technical documentation, which indicated
that the tip should be “secured” to the handpiece, as well
as testimony from various Stryker witnesses admitting
that the tip nozzles were fastened to the handpiece when
they were inserted. Stryker argued that, unlike the
accused Pulsavac Plus devices, which include a locking
ring to secure the tip, there is no separate part or assem-
bly in the Var-A-Pulse. Stryker also contended the prior
art device did not include the full claim limitation, which
requires that the lock assembly be “mounted” to the front
end of handpiece. Stryker argued that because Zimmer
identified a “lock assembly” that itself included the hous-
ing groove that is part of the front end, Zimmer was
essentially arguing that the lock assembly was mounted
to itself, thus nullifying the limitation. Stryker also
presented evidence to the jury showing that the Var-A-
Pulse tips readily fell off the front end of the handpiece,
STRYKER CORPORATION v. ZIMMER, INC. 15
and that this led the development of the locking ring in
the Pulsavac Pulse.
The jury ultimately found that there was no clear and
convincing evidence that the Var-A-Pulse device antici-
pated the ’807 patent’s asserted claims. In light of the
evidence that was presented, we find that a reasonable
jury could have reached this verdict. Accordingly, we
affirm.
The ’383 Patent
At trial, Zimmer argued that the asserted claims of
the ’383 patent were obvious at the time of the invention
in light of U.S. Patent No. 5,046,486 (“Grulke”), U.S.
Patent No. 4,817,599 (“Drews II”), and U.S. Patent No.
5,350,356 (“Bales”). Zimmer contends that all of the
limitations of the ’383 patent’s asserted claims were
collectively present in the prior art references. Stryker
does not directly dispute this point. Instead, it principally
argues that because the designs claimed by Grulke and
Drews II each exclude certain components described in
the claims, one of ordinary skill in the art would not have
been motivated to combine these references. In brief,
Grulke disclosed a pulsed lavage system that uses a
pneumatic, rather than an electric, motor. Drews II
disclosed a pulsed irrigation system, powered by an
electric motor, that is used as an eye wash.
At trial, Zimmer argued that it would have been obvi-
ous to one of ordinary skill to try to replace the pneumatic
motor of Grulke with the electric motor in Drews II.
Zimmer further argued that any reconfiguration of Grulke
to accommodate an electric motor could be done by one of
ordinary skill. See In re ICON Health & Fitness, Inc., 496
F.3d 1374, 1382 (Fed. Cir. 2007) (“[W]e do not ignore the
modifications that one skilled in the art would make to a
device borrowed from the prior art.”). Zimmer also argued
that even though the Grulke reference was directed to
orthopedic pulsed lavage systems, and the Drews II
16 STRYKER CORPORATION v. ZIMMER, INC.
reference was directed to eyewash systems, they both
described pressured water irrigation in hospitals and
clinics. Zimmer contended that that a person of ordinary
skill in the art of pulsed lavage devices would thus be
aware of the art in both fields and would be motivated to
combine features from each of them. See KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 420 (2007) (“Common sense
teaches, however, that familiar items may have obvious
uses beyond their primary purposes, and in many cases a
person of ordinary skill will be able to fit the teachings of
multiple patents together like pieces of a puzzle.”).
Zimmer also presented evidence of the examiner’s re-
jection of certain claims in Stryker’s prosecution of U.S.
Patent Application No. 11/563,504 (“’504 application”), a
continuation of the ’383 patent, which occurred during the
discovery phase of this case. During that patent applica-
tion’s prosecution, the examiner issued a non-final office
action, rejecting certain claims of the ’504 application as
obvious over Grulke “and further in view of Drews II.”
J.A. 17226. Stryker did not attempt to traverse the
rejection and instead ultimately abandoned the applica-
tion. Stryker principally argued that because the claim at
issue in the ’504 application included certain different
limitations, the examiner’s rejection did not have any
relevance to the ’383 patent’s claims. We note, however,
that the difference in the detail of the claims is immateri-
al as to whether it would have been obvious to combine
Grulke and Drews II. While persuasive, the examiner’s
proffered rejection is not on its own dispositive, in large
part because the U.S. Patent and Trademark Office
(“PTO”) and district courts “take different approaches in
determining invalidity and on the same evidence could
quite correctly come to different conclusions.” Ethicon,
Inc. v. Quigg, 849 F.2d 1422, 1428 (Fed. Cir. 1988).
Stryker also argued that the Grulke device differed
substantially from the Drews II device. For example, it
was designed for surgery rather than eyewashing. Grulke
STRYKER CORPORATION v. ZIMMER, INC. 17
also disclosed a large device that was wheeled into an
operating room that had many components that differed
from those in the portable device disclosed Drews II.
Stryker presented expert testimony rebutting Zimmer’s
evidence that it would have been obvious to combine these
references.
On the basis of the record presented at trial, we agree
with the district court that a reasonable jury could con-
clude that one of ordinary skill in the art would not have
been motivated to combine the Grulke and Drews II
references, even in light of the examiner’s rejection of
related claims on the basis of this combination. This is
sufficient to affirm the district court’s determination that
Zimmer did not show, by clear and convincing evidence,
that the ’383 patent’s claims were obvious.
For this reason, we need not reach other issues, in-
cluding the evidence of secondary considerations of non-
obviousness. Therefore, we affirm the district court’s
determination that the ’383 patent’s asserted claims were
not obvious over the combination of Grulke, Drews II, and
Bales. 5
5 Zimmer also appeals the jury’s finding that
Stryker’s products were sufficiently marked by the ’383
patent during part of the period for which it sought dam-
ages. We need not reach this issue, because we affirm the
finding that Zimmer infringed the ’807 and ’329 patents,
which is sufficient to support all of Stryker’s award of
damages for lost profit. However, we note that the jury
was indeed incorrectly instructed that it should consider
“whether some portion of the Stryker products not
marked with a particular patent number were marked
with other related patent notices.” Stryker Corp. v. Zim-
mer, Inc., No. 10-1223, slip op. at 18 (W.D. Mich. Aug. 7,
18 STRYKER CORPORATION v. ZIMMER, INC.
III
Enhanced Damages
After taking into consideration the circumstances of a
particular case, a court may exercise its discretion and
award enhanced damages under 35 U.S.C. § 284. Halo
Elecs., Inc., 136 S. Ct. at 1933. “[H]owever, such punish-
ment should generally be reserved for egregious cases
typified by willful misconduct.” Id. at 1934.
In making its willfulness determination, the district
court applied the standard we had previously articulated
in Seagate, which required a patentee to establish, by
clear and convincing evidence, both that there was an
objectively high likelihood that the accused infringer’s
actions constituted patent infringement, and that the risk
was “either known or so obvious that it should have been
known to the accused infringer.” See 497 F.3d at 1371.
The Supreme Court rejected this approach and explained
that “[t]he subjective willfulness of a patent infringer,
intentional or knowing, may warrant enhanced damages,
without regard to whether his infringement was objective-
2013), ECF No. 537 (“Post-Verdict Order”) (emphasis
added). Because of this instruction, the jury could have
been misled to consider a product marked with the num-
ber of a patent related to the ’383 patent—but not with
the ’383 patent number itself—as being sufficiently
marked. While the district court appears to have relied
on cases that suggest that there is some flexibility in what
constitutes sufficient marking, the statute is not so broad
as to allow marking with a different patent—with differ-
ent claims—to provide sufficient notice to the public.
Rather, the plain language of the marking statute pro-
vides that the patented article be marked with the “num-
ber of the patent.” 35 U.S.C § 287(a) (emphasis added).
STRYKER CORPORATION v. ZIMMER, INC. 19
ly reckless.” Halo Elecs., Inc., 136 S. Ct. at 1932. The
Supreme Court also rejected the use of a clear and con-
vincing standard in favor of a preponderance of the evi-
dence standard. Id. at 1934.
On appeal, Zimmer did not appeal the jury’s finding of
subjective willfulness under the Seagate test. On the
record in this case, willful misconduct is sufficiently
established by the jury’s finding. The jury made its
determination under the clear and convincing evidence
standard, which is a higher standard than is now neces-
sary. We therefore affirm the jury’s finding of willful
infringement.
In doing so, we think the best course is to vacate the
award of enhanced damages and remand to the district
court for consideration of this issue. As Halo makes clear,
the decision to enhance damages is a discretionary one
that the district court should make based on the circum-
stances of the case, “in light of the longstanding consider-
ations . . . as having guided both Congress and the
courts.” Id. at 1934. Thus, it is for the district court to
determine whether, in its discretion, enhancement is
appropriate here. We therefore vacate the district court’s
award of enhanced damages and remand to the district
court so that it may exercise its discretion.
Attorneys’ Fees
The district court’s award of attorneys’ fees was based
solely on its determination that Zimmer was liable of
willful infringement. Though we uphold the district
court’s willfulness determination, it does not necessarily
follow that the case is exceptional. As with the determi-
nation of whether enhanced damages are appropriate,
“[d]istrict courts may determine whether a case is ‘excep-
tional’ in the case-by-case exercise of their discretion,
considering the totality of the circumstances.” Octane
Fitness, LLC v. ICON Health & Fitness, Inc., 134 S. Ct.
1749, 1756 (2014). Because there exist further allegations
20 STRYKER CORPORATION v. ZIMMER, INC.
of litigation misconduct in this case and because the
standard for finding an exceptional case has changed
since the district court issued its ruling regarding attor-
neys’ fees, we also remand this issue for further consider-
ation by the district court.
IV
For the aforementioned reasons, we affirm the jury’s
verdict of infringement and validity of all three patents at
issue, as well as its award of lost profits and its willful-
ness determination. However, we vacate and remand the
district court’s award of trebled damages. We also vacate
and remand the district court’s finding of an exceptional
case and its award of attorneys’ fees. The case is remand-
ed for further proceedings consistent with this opinion.
AFFIRMED-IN-PART, VACATED-IN-PART, AND
REMANDED
COSTS
Each party shall bear its own costs.