Howmedica Osteonics Corp. v. Zimmer, Inc. , 822 F.3d 1312 ( 2016 )

United States Court of Appeals
for the Federal Circuit
______________________
HOWMEDICA OSTEONICS CORP., STRYKER
IRELAND LTD.,
Plaintiffs-Appellants
v.
ZIMMER, INC., WRIGHT MEDICAL TECHNOLOGY,
INC., SMITH & NEPHEW, INC.,
Defendants-Appellees
______________________
2015-1232, -1234, -1239
______________________
Appeals from the United States District Court for the
District of New Jersey in No. 2:11-cv-06511-SDW-MCA,
Judge Susan D. Wigenton.
______________________
Decided: May 12, 2016
______________________
GEORGE C. LOMBARDI, Winston & Strawn LLP, Chica-
go, IL, for plaintiffs-appellants Howmedica Osteonics
Corp., Stryker Ireland Ltd. Also represented by KARL
LEONARD; MICHELLE C. REPLOGLE, Houston, TX; SCOTT R.
SAMAY, New York, NY; JOVIAL WONG, Washington, DC;
WILLIAM L. MENTLIK, ROY H. WEPNER, Lerner, David,
Littenberg, Krumholz & Mentlik LLP, Westfield, NJ.
J. MICHAEL JAKES, Finnegan, Henderson, Farabow,
Garrett & Dunner, LLP, Washington, DC, for defendant-
2 HOWMEDICA OSTEONICS CORP. v. ZIMMER, INC.
appellee Zimmer, Inc. Also represented by AMANDA K.
MURPHY. Defendant-Appellee Wright Medical Technology,
Inc., represented by ANTHONY J. FITZPATRICK,
CHRISTOPHER S. KROON, Duane Morris, LLP, Boston, MA;
SAMUEL W. APICELLI, Philadelphia, PA. Defendant-
Appellee Smith & Nephew, Inc., represented by BRADLEY
T. LENNIE, Hunton & Williams, LLP, Washington, DC;
DAVID A. KELLY, Atlanta, GA; ARNOLD B. CALMANN,
Saiber, LLC, Newark, NJ.
______________________
Before O’MALLEY, PLAGER, and WALLACH, Circuit
Judges.
PLAGER, Circuit Judge.
This is a patent case. Plaintiffs-Appellants Howmedi-
ca Osteonics Corp. and Stryker Ireland Ltd. (collectively,
“Stryker”) appeal the district court’s final judgment. 1 The
district court held that Defendants-Appellees Smith &
Nephew, Inc. (“Smith”); Wright Medical Technology, Inc.
(“Wright”); and Zimmer, Inc. (“Zimmer”) (collectively
“Zimmer et al.”) did not infringe the asserted claims of
U.S. Patent No. 6,475,243 (“’243 patent”). 2
The district court granted summary judgment of non-
infringement following claim construction. On appeal,
Stryker contends that the district court erred in its claim
construction and abused its discretion by forbidding
1 We refer to the final judgment for ease of refer-
ence. The district court granted a separate final judg-
ment in favor of each defendant-appellee.
2 As explained in more detail later, the ’243 patent
at issue is a reexamination patent; several of the asserted
claims were added in reexamination.
HOWMEDICA OSTEONICS CORP. v. ZIMMER, INC. 3
Stryker from asserting infringement under the doctrine of
equivalents.
BACKGROUND
I. Technology and Prosecution History
The ’243 patent concerns a socket assembly used in
prosthetic hip implants. The patent addresses three
major components involved: a shell member and a bearing
member, which together replace the socket (technically
the acetabulum) part of the pelvis bone, and the femoral
component, the ball-shaped end of the thigh bone that
marries with the socket. In a prosthetic hip replacement,
a shell device is implanted into a patient’s pelvic bone; a
bearing device is then secured into that shell; and that
bearing then receives the ball-shaped end of a patient’s
femur (which end may be replaced with an artificial ball
device).
According to the patent, securing the bearing to the
shell is particularly important. The securement mecha-
nism depends upon the type of bearing chosen by the
physician. In some instances, a bearing may be secured
by means of a rib-recess securement. The bearing’s
exterior surface, which comes into contact with the shell’s
interior surface, contains a protruding rib. That rib fits
into a recess within the shell’s interior surface. This
attachment mechanism works when the bearing is of a
flexible type, such as a polyurethane substance.
In other instances, a bearing may be secured by
means of complementary tapered surfaces. A portion of
the bearing’s exterior surface, which comes into contact
with the shell’s interior surface, is tapered in a manner
complementary to a tapered portion of a shell’s interior
surface. This may be used when the bearing is of a ce-
ramic or metal type.
4 HOWMEDICA OSTEONICS CORP. v. ZIMMER, INC.
In at least some instances, a fourth component may be
involved—a metallic securing device or sleeve, which fits
in between the shell and the bearing.
Regardless of whether a sleeve is necessary, the pa-
tented shell can accommodate either type of securement
since the shell may contain both a recess and a tapered
surface. However, the location of the recess relative to the
taper within the shell is important. The patent claims
specify that the recess and the taper (or the first and
second securing “structures” or “elements”) are to be
“juxtaposed” or in “juxtaposition” with one another and
“placed at relative locations such that the effectiveness” of
each is “maintained while in the presence of the other.” 3
Examples:
Claim 20: “the first and second securing struc-
tures being juxtaposed with one another and
placed at relative locations such that the effec-
tiveness of each of the first and second securing
elements is maintained while in the presence of
the other of the first and second securing ele-
ments”;
Claim 27: “the first and second securing elements
being juxtaposed with one another and placed at
relative locations such that the effectiveness of
each of the first and second securing elements is
maintained while in the presence of the other of
the first and second securing elements”;
Claim 41: “the securement recess and the internal
securement taper being juxtaposed with one an-
other and placed at relative locations such that
the effectiveness of each of the securement recess
3 For ease of reference, we refer to the recess and
taper—not the “structures” or “elements”—unless other-
wise noted.
HOWMEDICA OSTEONICS CORP. v. ZIMMER, INC. 5
and the internal securement taper is maintained
while in the presence of the other of the secure-
ment recess and the internal securement taper”;
and
Claim 53: “the securement recess and the internal
securement taper are in juxtaposition with one
another and placed at relative locations such that
the effectiveness of each of the securement recess
and the internal securement taper is maintained
while in the presence of the other of the secure-
ment recess and the internal securement taper.”
’243 Ex Parte Reexamination Certificate at 1:47–55
(claim 20), 3:11–17 (claim 41), 5:48–6:5 (claim 53);
’243 patent at 17:3–8 (claim 27).
In two separate passages, the written description ex-
plains that the recess is to be placed “essentially midway”
along the taper. First, in discussing shell member 22, the
patent states:
Seating surface 110 includes an upper end 112
and a lower end 114 and is divided by the recess
62 into an upper segment 116 and a lower seg-
ment 118 (see FIG. 4). By placing the recess 62
essentially midway between the upper end 112
and the lower end 114, engagement of the seating
surfaces 106 and 110, and the locking of the seat-
ing surfaces 106 and 110 in response to such en-
gagement, is facilitated by virtue of the locking
being accomplished along segments 116 and 118
having generally the same, and therefore maxim-
ized, axial length. In this manner, the effective-
ness of the seating surface 110 in assuring
appropriate alignment between the sleeve 100 and
the shell member 22 as the sleeve 100 is inserted
into the shell member 22 and in subsequently at-
taining the desired locking engagement with seat-
6 HOWMEDICA OSTEONICS CORP. v. ZIMMER, INC.
ing surface 106 is not compromised by the pres-
ence of the recess 62.
’243 patent at 7:8–23 (emphasis added).
The patent explains that seating surface 110, located
in the shell’s interior surface, is provided with a tapered
configuration for mating with another tapered surface.
Id. at 6:20–7:5. These components are pictured:
Second, in discussing shell member 212, the patent
states:
Seating surface 354 includes an upper end 360
and a lower end 362 and is divided by the recess
262 into an upper segment 364 and a lower seg-
ment 366. By placing the recess 262 essentially
midway between the upper end 360 and the lower
end 362, engagement of the seating surfaces 350
and 354, and the locking of the seating surfaces
350 and 354 in response to such engagement is fa-
cilitated, by virtue of the locking being accom-
plished along segments 364 and 366 having
generally the same, and therefore maximized, ax-
ial length. In this manner, the effectiveness of the
seating surface 354 in assuring appropriate
8 HOWMEDICA OSTEONICS CORP. v. ZIMMER, INC.
and subsequent (on the right) versions of Figure 4 are
reproduced below:
Fourth, Stryker added dependent claims 25 and 32 which
explicitly state that the recess is located “essentially
midway between the upper and lower ends of the internal
securing surface.” ’243 Ex Parte Reexamination Certifi-
cate at 2:7–9 (claim 25); ’243 patent at 18:4–6 (claim 32).
II. Procedural History
On November 4, 2011, Stryker sued Zimmer et al. in
the United States District Court for the District of New
Jersey for infringing the ’243 patent. On May 17, 2012,
Stryker served its initial infringement contentions assert-
ing literal infringement of several claims—without assert-
ing infringement under the doctrine of equivalents
(“DOE”). However, Stryker also stated:
To the extent that any of the limitations of the as-
serted claims are not deemed to be literally in-
fringed in the manner set forth in Exhibit A,
Stryker contends that they are infringed under
the doctrine of equivalents. In the event that a
claim limitation is deemed to be missing under a
literal infringement analysis (e.g., due to claim
construction), Stryker reserves the right to
demonstrate the presence of a substantial equiva-
HOWMEDICA OSTEONICS CORP. v. ZIMMER, INC. 9
lent of such an element and pursue infringement
claims under the doctrine of equivalents.
J.A. 5409–10, 5463, 5758–59.
On July 9, 2013, the district court issued its Markman
opinion and order. The court construed the relative
location claim language quoted above in claims 20, 27, 41,
and 53, to require that “the recess is essentially midway
along the taper such that the effectiveness of each is not
compromised.” J.A. 39. The court also construed claim
language in the same claims to require that “the internal
taper of the shell mates with the external taper of a
metallic securing member (i.e. sleeve) secured to and
separate from the bearing member.” J.A. 46. In other
words, the court required the presence of a sleeve in
between the shell and the bearing, for the taper type of
securement.
As a result of the “sleeve” construction, Stryker could
no longer prove infringement by Wright or Zimmer—
neither of their products contained a sleeve. Appellants’
Br. at 17. As a result of the “essentially midway” con-
struction, Stryker could no longer prove literal infringe-
ment by any of the Appellees. Id. at 18–19.
Even after the adverse claim constructions, Stryker
did not move to amend its infringement contentions to
include the DOE.
Stryker offered Wright and Zimmer a stipulated
judgment of non-infringement under the “sleeve” con-
struction. Stryker offered Smith a stipulated judgment of
non-infringement under the “essentially midway” con-
struction. No consent judgment was reached because
Wright and Zimmer sought a judgment that they did not
infringe under the “essentially midway” construction.
Despite the lack of agreement, Stryker moved for en-
try of final judgment or entry of partial final judgment
under Fed. R. Civ. P. 54(b)—based on the “sleeve” con-
10 HOWMEDICA OSTEONICS CORP. v. ZIMMER, INC.
struction as to Zimmer and Wright and the “essentially
midway” construction as to Smith. In its briefing, Stryker
stated it had infringement arguments against Wright and
Zimmer regarding the “essentially midway” construction
under the DOE. The district court denied Stryker’s
motion and ordered summary judgment briefing. Zimmer
et al. moved for summary judgment. The parties agreed
that only claims 20, 27, 41, and 53 were relevant for
summary judgment.
On November 24, 2014, the court issued an opinion
and order granting Zimmer et al.’s motions for summary
judgment of non-infringement. The court determined that
Stryker’s failure to amend its infringement contentions to
include a DOE infringement theory precluded Stryker
from asserting that theory in opposition to Zimmer et al.’s
motions for summary judgment. The court noted that
Stryker could not assert infringement under the DOE
generally and also stated Stryker was specifically pre-
cluded from asserting the DOE theory of infringement
with respect to the “essentially midway” construction.
Stryker did not argue for literal infringement under the
court’s “essentially midway” construction. As a result, the
court granted Zimmer et al.’s motions for summary judg-
ment based on the “essentially midway” construction.
The court also granted Zimmer’s and Wright’s motions for
summary judgment of non-infringement based on the
court’s “sleeve” construction. The court expressed no
opinion as to whether Smith would be entitled to sum-
mary judgment on the basis of the “sleeve” construction.
The court entered final judgments based upon its
granting Appellees’ motions for summary judgment.
HOWMEDICA OSTEONICS CORP. v. ZIMMER, INC. 11
Stryker appealed to this court, and we have jurisdiction
pursuant to 28 U.S.C. § 1295(a)(1). 4
DISCUSSION
Resolution of this appeal turns on two issues: did the
district court err in its claim constructions, and did the
district court err in precluding Stryker from pursuing a
DOE theory of infringement.
We review a district court’s grant of summary judg-
ment according to the law of the regional circuit. Teva
Pharm. Indus. Ltd. v. AstraZeneca Pharm. LP, 661 F.3d
1378, 1381 (Fed. Cir. 2011). The Third Circuit reviews
grants of summary judgment without deference, applying
the same standard used by the district court. Azur v.
Chase Bank, USA, Nat’l Ass’n, 601 F.3d 212, 216 (3d Cir.
2010). Summary judgment is appropriate when there is
no genuine dispute as to any material fact and the mo-
vant is entitled to judgment as a matter of law. Fed. R.
Civ. P. 56; Anderson v. Liberty Lobby, Inc., 477 U.S. 242,
247–48 (1986).
We review claim construction without deference to the
trial court’s view of the matter, but we review underlying
factual findings by the district court for clear error. Teva
Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 841–42
(2015).
We review a district court’s application of its local
rules for abuse of discretion. O2 Micro Int’l Ltd. v. Mono-
lithic Power Sys., Inc., 467 F.3d 1355, 1366–67 (Fed. Cir.
2006).
4 This appeal is a consolidation of appeal nos. 2015-
1232, 2015-1234, and 2015-1239.
12 HOWMEDICA OSTEONICS CORP. v. ZIMMER, INC.
I. Claim Construction
First, we examine the district court’s claim construc-
tion. Stryker contests both the “essentially midway” and
“sleeve” constructions. However, we need only address
the “essentially midway” construction because it is dispos-
itive.
Generally, a claim term is given its ordinary and cus-
tomary meaning—the meaning that a “term would have
to a person of ordinary skill in the art in question at the
time of the invention.” Phillips v. AWH Corp., 415 F.3d
1303, 1312–13 (Fed. Cir. 2005) (en banc). However, a
skilled artisan reads a claim term not only in the context
of the claim at issue, but also in the context of the entire
patent, including the written description and prosecution
history, as well as relevant extrinsic evidence. Id. at
1313–17. Indeed, “the [written description] ‘is always
highly relevant to the claim construction analysis. Usual-
ly, it is dispositive; it is the single best guide to the mean-
ing of a disputed term.’” Id. at 1315 (citation omitted).
Nevertheless, we have observed that there is a fine line
between reading a claim in light of the written description
and reading a limitation into the claim from the written
description. Id. at 1323.
As discussed in the background section above, each
claim at issue specifies that the recess and taper of the
shell be “juxtaposed” or in “juxtaposition” with one anoth-
er and “placed at relative locations such that the effec-
tiveness” of each is “maintained while in the presence of
the other.” The claims themselves do not describe how to
achieve this outcome.
As noted earlier, the written description contains two
passages—set out above—describing how to place the
recess and taper relative to one another to maintain
effective alignment and securement. Both passages were
HOWMEDICA OSTEONICS CORP. v. ZIMMER, INC. 13
added in conjunction with the claim language at issue. 5
Both passages place the recess “essentially midway” along
the taper, dividing the taper into two roughly equal
segments whose lengths are thereby maximized. ’243
patent at 7:8–23, 11:28–42. The written description
explains that, as a result, the effectiveness of the taper is
not compromised by the presence of the recess. Id. These
explanations are the only instances in which the patent
specifies how to achieve the goals of relative recess and
taper placement and what effectiveness of the taper
means in the context of the claims. Indeed, the written
description offers no other suggestion as to how the recess
and taper should be located to satisfy the claim language.
Thus, every description and every figure in the patent
that discusses the issue places the recess “essentially
midway” along the taper.
Stryker asks that we focus on the plain language of
the claims and offers a number of dictionary definitions
for the terms “juxtaposed with” and “in juxtaposition
with” to mean that the recess and taper are “positioned
nearby” one another. But focusing on a particular term’s
plain and ordinary meaning may be inadequate, when
relying on that meaning does not resolve the parties’
dispute. See O2 Micro Int’l, Ltd. v. Beyond Innovation
Tech. Co., 521 F.3d 1351, 1361 (Fed. Cir. 2008). That is
the case here. By focusing on the specific juxtaposition
terms, Stryker ignores the other claim language at issue
(e.g., effectiveness) and fails to resolve the parties’ dispute
as to how the recess and taper are to be located relative to
5 More accurately, the written description passages
were added in conjunction with only some of the claims at
issue—claims 20 and 27. Claims 41 and 53 were added
during reexamination. Claim 20 was amended during
reexamination.
14 HOWMEDICA OSTEONICS CORP. v. ZIMMER, INC.
each other to satisfy the entirety of the claim language at
issue.
This problem is only resolved by examining the writ-
ten description—i.e., reading the claims in context.
Construing the claims in this manner is not only con-
sistent with our precedent, but also necessary in light of
the claim language at issue. We have previously con-
strued such relative location terms in a similar manner by
relying upon the written description. See, e.g., Hologic,
Inc. v. SenoRx, Inc., 639 F.3d 1329 (Fed. Cir. 2011). Here,
we must understand how the recess and taper are to be
“juxtaposed” or in “juxtaposition” with one another, and
“placed at relative locations such that the effectiveness” of
each is “maintained while in the presence of the other.”
The meaning of these terms is not facially clear, and a
skilled artisan would naturally look to the written de-
scription for a full understanding of the claims. We do the
same and adopt the district court’s construction.
We noted earlier the fine line between reading claims
in light of the written description, and importing limita-
tions from the written description. We also note that not
all commentators are in agreement that we religiously
adhere to the distinction. See, e.g., Robert L. Harmon et
al., Patents and the Federal Circuit 453–56 (12th ed.
2015). The statute requires that claims “particularly
point[] out and distinctly claim[] the subject matter” of the
invention. 35 U.S.C. § 112(b); see also Nautilus, Inc. v.
Biosig Instruments, Inc., 134 S. Ct. 2120, 2124 (2014).
When the claims leave little doubt as to what is intended,
re-shaping the claims with material from the written
description is clearly unwarranted.
On the other hand, the parties have not raised the
question of whether the juxtaposition language could
make the claims fatally indefinite. Under the circum-
stances, construing the unclear claim terms at issue in
HOWMEDICA OSTEONICS CORP. v. ZIMMER, INC. 15
light of the written description explanation is the proper
claim construction technique.
Stryker argues that the district court’s construction is
improper for at least two additional reasons, neither of
which is persuasive.
A. Preferred Embodiments
Stryker contends that the “essentially midway” lan-
guage in the written description concerns a preferred
embodiment or preferred embodiments and that we
cannot so limit the claims. Stryker labels this as the
“cardinal sin” of claim construction, based upon Phillips,
415 F.3d at 1320, and DSW, Inc. v. Shoe Pavilion, Inc.,
537 F.3d 1342, 1348 (Fed. Cir. 2008).
First, Stryker focuses on the sentences preceding each
of the two written description passages set out above: “In
the preferred embodiment, the shell member 22 and the
sleeve 100 are constructed of commercially pure titanium
and the angle A is about 6º.” ’243 patent at 7:5–8. “In the
preferred embodiment, the shell member 212 and the
sleeve 340 are constructed of commercially pure titanium
and the angle 356 is about 60.” Id. at 11:25–27. 6 Stryker
notes that each sentence starts with the phrase “In the
preferred embodiment.” Stryker reasons that introducto-
ry clauses apply not only to the sentences in which they
are located, but also to the entirety of the quoted passag-
es.
Stryker is mistaken. Both sentences discuss pre-
ferred embodiments only with respect to the angle of the
taper—not the relative locations of the recess and the
taper. In other words, context reveals that such introduc-
6 It appears that the language may have been mis-
takenly drafted as “angle 356 is about 60” instead of
“angle 356 is about 6º.”
16 HOWMEDICA OSTEONICS CORP. v. ZIMMER, INC.
tory clauses limit only the sentences in which they are
located in this case.
Second, Stryker argues that the “essentially midway”
language in the written description concerns a preferred
embodiment because of language near the beginning and
end of the written description. Before the figures are
described, the patent states: “The invention will be under-
stood more fully . . . in the following detailed description
of preferred embodiments of the invention.” Id. at 3:42–
45. Similarly, before reciting the claims: “It is to be
understood that the above detailed description of pre-
ferred embodiments of the invention is provided by way of
example only.” Id. at 12:54–56.
However, if the general rule against limiting claims in
this manner held, then Stryker’s proposed understanding
would quite severely limit any understanding of the
claims in light of the written description. Indeed, there
would be some question as to whether there was the
statutorily required written description—“[t]he specifica-
tion shall contain a written description of the invention . .
. in . . . full, clear, concise, and exact terms.” 35 U.S.C.
§ 112(a).
We decline to read this written description in such a
crabbed manner as Stryker suggests. Reading the patent
in its entirety, it is clear that such generalized language
concerning preferred embodiments, near the start and
end of the written description, does not limit the entirety
of the intervening section—3:42 to 12:54. In this case,
such language merely reflects that this wide swath of the
written description may contain descriptions of preferred
embodiments, and this is true.
Finally, Stryker argues that, even if we were to rely
on the written description, it merely teaches that the
length of the taper zone should be maximized—and that
this can be accomplished by placing the groove midway
along the taper, at an edge of the taper, or not in the
HOWMEDICA OSTEONICS CORP. v. ZIMMER, INC. 17
taper. However, this misconstrues the language of the
written description, which clearly discusses maximizing
each of the two separate segments of the taper created by
placing the groove in the middle of the taper and thereby
bisecting the taper. See ’243 patent at 7:8–23, 11:28–42.
B. Claim Differentiation
Stryker also argues that the district court’s construc-
tion violates the doctrine of claim differentiation, since
dependent claims are presumed to be of narrower scope
than the independent claims from which they depend.
Stryker cites claims 25 and 32, which include the addi-
tional, explicit requirement that the “recess is located
essentially midway” between the taper. Claim 25 ulti-
mately depends from independent claim 20. Claim 32
ultimately depends from independent claim 27.
However, claim differentiation is a rebuttable pre-
sumption that may be overcome by a contrary construc-
tion dictated by the written description or prosecution
history. Retractable Techs., Inc. v. Becton, Dickinson &
Co., 653 F.3d 1296, 1305 (Fed. Cir. 2011). In this in-
stance, that presumption has been rebutted. The written
description reveals only instances in which the claim
language is satisfied by the placement of the recess “es-
sentially midway” along the taper. The prosecution
history reveals that the same language from the written
description was added in conjunction with the similar
claim language at issue—as well as the “essentially
midway” language in dependent claims 25 and 32. The
natural and correct result of reviewing the intrinsic
evidence was the district court’s construction. Claim
differentiation is not conclusive; it is a guide, not a rigid
rule. See ICU Med., Inc. v. Alaris Med. Sys., Inc., 558
F.3d 1368, 1376 (Fed. Cir. 2009). Although it is a useful
tool, claim differentiation does not require that the “de-
pendent claim tail . . . wag the independent claim dog” in
18 HOWMEDICA OSTEONICS CORP. v. ZIMMER, INC.
this case. See N. Am. Vaccine, Inc. v. Am. Cyanamid Co.,
7 F.3d 1571, 1577 (Fed. Cir. 1993).
For the foregoing reasons, we affirm the district
court’s “essentially midway” construction.
II. Local Patent Rules
Second, we examine whether the district court abused
its discretion in applying its local rules to preclude
Stryker from arguing infringement under the DOE. We
affirm decisions in which the district court enforced its
own local rules, unless it is “clearly unreasonable, arbi-
trary, or fanciful; based on erroneous conclusions of law;
clearly erroneous; or unsupported by any evidence.”
Monolithic, 467 F.3d at 1366–67; see also Mortgage Grad-
er, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314,
1321 (Fed. Cir. 2016) (same). In light of this highly
deferential review standard, we are not able to conclude
that the district court abused its discretion.
The district court determined that Stryker could not
assert any DOE theory of infringement because Stryker
failed to comply with the court’s Local Patent Rules
(“LPR”). LPR 3.1(e) requires that a patentee’s infringe-
ment contentions state “whether each limitation of each
asserted claim is alleged to be literally present or present
under the doctrine of equivalents in the Accused Instru-
mentality,” unless a design patent is at issue. The district
court noted that Stryker failed to set forth specifically any
DOE theory in its original infringement contentions nor
did it allege DOE in later amended contentions. Indeed,
Stryker never sought to amend its infringement conten-
tions to include the DOE. And the court also determined
that Stryker’s reserving its right to assert the DOE did
not satisfy LPR 3.1(e).
We defer to the district court “when interpreting and
enforcing local rules so as not to frustrate local attempts
to manage patent cases according to prescribed guide-
HOWMEDICA OSTEONICS CORP. v. ZIMMER, INC. 19
lines.” Genentech, Inc. v. Amgen, Inc., 289 F.3d 761, 774
(Fed. Cir. 2002). The local rules clearly required Stryker,
as the party asserting infringement, to state whether it
asserted infringement under the DOE in its infringement
contentions. The local rules also clearly envisioned that
Stryker could seek to amend its infringement contentions.
LPR 3.7 allows for amendment by court order upon a
timely application and showing of good cause. LPR 3.7(a)
specifically notes that “a claim construction by the [c]ourt
different from that proposed by the party seeking
amendment” may, absent undue prejudice to the adverse
party, support a finding of good cause.
Stryker never sought to amend its infringement con-
tentions to include the DOE, so it cannot demonstrate
that it satisfied the LPR requirements. Although the
result may seem harsh, we find no abuse of discretion in
the district court applying its rather clearly stated rule.
Indeed, we have failed to find an abuse of discretion in
similar circumstances. In Genentech, 289 F.3d at 773–74,
we affirmed the district court’s ruling that Genentech
failed to comply with a local rule requiring that a DOE
theory be included in its claim chart. As a result, Genen-
tech was barred from proceeding with a DOE theory of
infringement. Id.
Stryker’s arguments on this point are not persuasive.
Stryker first attempts to shift the focus from the LPR by
arguing that the district court abused its discretion in
permitting Zimmer et al. to move for summary judgment.
Stryker reasons that the district court should have grant-
ed it final judgment on the same terms as its proposed
consent judgment—although not all Appellees agreed to
those terms. We observe that this argument ignores the
district court’s actual decision and does not address
Stryker’s failure to abide by the local rules. Moreover,
Stryker did not appeal the denial of its motion for entry of
final judgment.
20 HOWMEDICA OSTEONICS CORP. v. ZIMMER, INC.
Stryker next argues that it had no need to allege a
DOE theory of infringement until after claim construc-
tion. This may have been true, but it still does not excuse
Stryker’s failure to follow the local rules. Even if Stryker
had no reason to amend until after claim construction,
Stryker could have sought amendment after the Mark-
man order. Stryker asserts that a litigant cannot be
forced to foresee and incorporate all possible claim con-
structions into its initial infringement contentions. This
may be true, but the local rules provide for opportunity to
seek amendment of its contentions for this very reason.
See LPR 3.7(a) (discussing claim construction).
Stryker focuses on language in Monolithic, 467 F.3d
at 1366, that “[i]f a local patent rule required the final
identification of infringement and invalidity contentions
to occur at the outset of the case, shortly after the plead-
ings were filed and well before the end of discovery, it
might well conflict with the spirit, if not the letter, of the
notice pleading and broad discovery regime created by the
Federal Rules.” Of course, we agree, but we highlight the
very next sentence from the same opinion: “But we see
nothing in the Federal Rules that is inconsistent with
local rules requiring the early disclosure of infringement
and invalidity contentions and requiring amendments to
contentions to be filed with diligence.” Id. (emphasis
added).
With respect to amendment, Stryker argues there was
no opportunity or reason to amend after the Markman
order, because discovery had been stayed. Zimmer et al.
note a number of discrepancies with this argument, which
Stryker does not contest. Zimmer et al. note that Stryker
engaged in discovery after the Markman order by request-
ing samples of the accused products—and that Zimmer et
al. provided such samples. Zimmer et al. note that the
district court then entered an order ending discovery two
months after the Markman order, because Stryker con-
HOWMEDICA OSTEONICS CORP. v. ZIMMER, INC. 21
ceded at a status conference that it could not prove in-
fringement.
Moreover, when seeking entry of a final judgment,
Stryker contended it had a DOE argument, but Stryker
refused to disclose the basis for that argument. Stryker
does not appear to contest any of these points. Even if
Stryker did contest these points, the record reflects that
Stryker had time to seek amendment of its infringement
contentions but failed to do so. In light of the record we
cannot conclude that the district court abused its discre-
tion in applying its local rules to prevent Stryker from
asserting the DOE when it did.
III. Summary Judgment
The district court granted Zimmer et al.’s motions for
summary judgment on the basis of the “essentially mid-
way” construction. The court reasoned that, in light of the
accused devices, Stryker could not prevail on a literal
infringement theory, and could not argue for DOE in-
fringement given its failure to comply with the local rules.
Stryker has not identified any genuine dispute as to any
material fact or any indication why Zimmer et al. would
not be entitled to judgment as a matter of law based on
our affirming the “essentially midway” construction and
affirming the district court’s application of its local rules
to bar Stryker’s DOE argument. We affirm on this
ground, but we express no opinion as to the district court’s
grant of summary judgment in favor of Wright and Zim-
mer on the basis of the “sleeve” construction. On the
basis of our disposition, we need not and do not reach that
issue.
As a result of the consolidation of the three cases here
on appeal, identifying the exact “asserted claims” in this
case is not a straightforward exercise. For the record,
here is our understanding. Although neither the parties
nor the district court identified for the record on appeal
all of the actual “asserted claims,” the parties and the
22 HOWMEDICA OSTEONICS CORP. v. ZIMMER, INC.
district court appear to have agreed that claims 20, 27,
41, and 53 were dispositive for the purposes of summary
judgment.
In their briefing of summary judgment before the dis-
trict court, the Appellees identified the asserted claims in
each of their cases. Zimmer stated that Stryker asserted
Zimmer infringed claims 20, 27–30, 35–37, 39, 41–48, and
53–55. Motion for Summary Judgment by Zimmer, Inc.
at 2, Howmedica v. DePuy, No. 11-6498 (D.N.J. June 6,
2014), ECF No. 225-2. All of these claims are either the
independent claims at issue on appeal (claims 20, 27, 41,
and 53) or are dependent claims ultimately depending
from those independent claims. Each of those independ-
ent claims contains language affected by the “essentially
midway” construction. Stryker could not prevail on a
literal infringement theory under the district court’s
construction.
Wright stated that Stryker asserted Wright infringed
claims 20, 27–30, 36, 37, 39, 41–44, 47, 48, and 53. Mo-
tion for Summary Judgment of Noninfringement by
Wright Med. Tech., Inc. at 2, Howmedica v. DePuy, No.
11-6498 (D.N.J. June 6, 2014), ECF No. 224-2. All of
these claims are either the independent claims at issue on
appeal (claims 20, 27, 41, and 53) or are dependent claims
ultimately depending from those independent claims.
Each of those independent claims contains language
affected by the “essentially midway” construction.
Stryker could not prevail on a literal infringement theory
under the district court’s construction.
Smith stated that Stryker asserted Smith infringed
claims 20, 27–30, 35–37, 39, and 41–55. Motion for
Summary Judgment of Non-Infringement by Smith &
Nephew Inc. at 1, Howmedica v. DePuy, No. 11-6498
(D.N.J. June 6, 2014), ECF No. 220-2. All of these
claims—except for claims 49–51—are either the inde-
pendent claims at issue on appeal (claims 20, 27, 41, and
HOWMEDICA OSTEONICS CORP. v. ZIMMER, INC. 23
53) or are dependent claims ultimately depending from
those independent claims. Claims 49–51 each include the
identical relative location terms found in claim 20—which
is at issue on appeal. It is unclear why the district court
or the parties did not construe the identical claim lan-
guage in claims 49–51. However, the parties and the
district court appear to be in agreement that the construc-
tion of these terms in the claims at issue on appeal—
claims 20, 27, 41, and 53—is dispositive. With this un-
derstanding, we affirm.
CONCLUSION
We have considered the parties’ other arguments but
found them unpersuasive. For the foregoing reasons, the
final judgments of the district court are affirmed.
AFFIRMED