Smith & Nephew, Inc. v. Arthrex, Inc. , 453 F. App'x 977 ( 2011 )

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
__________________________
SMITH & NEPHEW, INC.,
Plaintiff-Appellee,
v.
ARTHREX, INC.,
Defendant-Appellant.
__________________________
2010-1427
__________________________
Appeal from the United States District Court for the
Eastern District of Texas in case No. 07-CV-0335, Judge
T. John Ward.
___________________________
Decided: June 20, 2011
___________________________
MARK G. MATUSCHAK, Wilmer, Cutler, Pickering, Hale
and Dorr, LLP, of Boston, Massachusetts, argued for
plaintiff-appellee. With him on the brief were JAMES M.
DOWD, of Los Angeles, California; and DAVID L.
CAVANAUGH, of Washington, DC. Of counsel was PAUL B.
KELLER, of New York, New York.
ANTHONY P. CHO, Carlson, Gaskey & Olds. P.C., of
Birmingham, Michigan, argued for the defendant-
SMITH & NEPHEW v. ARTHREX 2
appellant. Of counsel on the brief were STEVEN C. SUSSER
and RODGER D. YOUNG, Young & Susser, P.C., of South-
field, Michigan; and ERIC M. ALBRITTON, Albritton Law, of
Longview, Texas. Of counsel was DEBRA ROCHELLE
COLEMAN, Albritton Law, of Longview, Texas.
__________________________
Before RADER, Chief Judge, and PLAGER and MOORE,
Circuit Judges.
MOORE, Circuit Judge.
Arthrex, Inc. (Arthrex) appeals the United States Dis-
trict Court for the Eastern District of Texas’s denial of its
motions for Judgment as a Matter of Law (JMOL) after a
jury found Arthrex liable for direct and indirect infringe-
ment for the sale of its RetroButton® device. Because
Smith and Nephew, Inc. (S&N) presented insufficient
evidence at trial to support a finding that the RetroBut-
ton® device infringed Claim 8 of U.S. Patent No.
5,645,588 (’588 patent), we reverse.
BACKGROUND
On August 7, 2007, S&N filed a complaint in the
Eastern District of Texas against Arthrex alleging in-
fringement of Claim 8 of the ’588 patent based on Ar-
threx’s sale of the RetroButton® device. The ’588 patent
describes and claims a surgical device used in reconstruc-
tive surgery of the anterior cruciate ligament (ACL).
Claim 8 reads as follows:
A graft attachment device for attaching an ante-
rior cruciate ligament graft to a bone wherein a
passage is drilled through the bone for attachment
thereto, comprising:
3 SMITH & NEPHEW v. ARTHREX
a graft connection element comprising a sling
member having a width sufficient to carry
the graft during and after implantation;
an elongated body sized to pass through the
passage in the bone and having an upper
surface, a lower surface, a leading end,
and a trailing end, each said end having a
hole defined by said elongated body con-
figured to carry a filament, a portion of
said body disposed between said hole in
said leading end and said hole in said
trailing end being configured for attaching
to said body the graft connection element
and enabling said body to rotate relative
to the graft from an initial insertion posi-
tion, along an axis substantially parallel
to the graft, to a final fixation position
transverse to the graft to secure the graft
relative to the bone; and
filament threaded through said hole in said
leading end and said hole in said trailing
end.
The district court issued a claim construction order on
November 20, 2009. J.A. 1-47. The district court con-
strued the term “graft connection element” to mean
“material that supports the graft that is located between
the hole in the leading end and the hole in the trailing
end and is distinct from the material located in said
holes.” J.A. 17. Further, the district court determined
that the “graft connection element includes at least a
sling member.” J.A. 20. The district court construed the
term “sling member” as a “loop of material that supports
the graft.” J.A. 20.
SMITH & NEPHEW v. ARTHREX 4
Following claim construction, Arthrex filed a motion
for summary judgment of no infringement. Arthrex’s
motion for summary judgment focused on two arguments.
First, Arthrex argued that its RetroButton® device did
not contain a “trailing filament” as required by Claim 8.
J.A. 57. Second, Arthrex argued that the RetroButton®
did not contain holes in either the “trailing end” or the
“leading end” as required by Claim 8. J.A. 58.
The district court granted Arthrex’s motion for sum-
mary judgment regarding literal infringement. The
district court determined “that as a matter of law the
accused device has no hole in the ‘leading end’ or ‘trailing
end’ and has no ‘filament’ threaded through a hole in the
‘leading end’ or ‘trailing end.’” J.A. 63. The district court,
however, determined that there were genuine issues of
material fact regarding infringement under the doctrine
of equivalents, including: 1) whether the RetroButton®
device’s loop is equivalent to the claimed trailing filament;
and 2) whether the device’s tear drop-shaped holes are the
equivalent of the claimed holes in the trailing end and the
leading end. J.A. 64. Further, the district court deter-
mined that neither prosecution history estoppel nor the
all-elements rule precluded S&N’s arguments regarding
infringement under the doctrine of equivalents. J.A. 64.
Following a five-day trial, the jury returned a verdict
finding that the RetroButton® device directly infringed
Claim 8 of the ’588 patent and that Arthrex induced
infringement of Claim 8. The jury awarded $4,713,000 in
damages.
After trial, Arthrex filed renewed JMOL motions for
noninfringement, invalidity, and damages. On June 15,
2010, the district court denied the motions and granted
S&N’s motion for a permanent injunction. The district
court later stayed the permanent injunction pending
5 SMITH & NEPHEW v. ARTHREX
appeal, J.A. 99, finding that “the facts and legal issues of
this case are particularly close on the issue of infringe-
ment.” J.A. 97. Arthrex appeals and we have jurisdiction
pursuant to 28 U.S.C. § 1295.
DISCUSSION
Because the denial of a motion for judgment as a mat-
ter of law is a procedural issue not unique to patent law,
we review it under the law of the regional circuit. Sum-
mit Tech., Inc. v. Nidek Co., 363 F.3d 1219, 1223 (Fed.
Cir. 2004). The Fifth Circuit reviews the denial of JMOL
de novo. Med. Care Am., Inc., v. Nat’l Union Fire Ins. Co.,
341 F.3d 415, 420 (5th Cir. 2003). “JMOL is appropriate
when ‘a party has been fully heard with respect to an
issue and there is no legally sufficient evidentiary basis
for a reasonable jury to have found for the party with
respect to that issue.’” Id. (quoting Fed. R. Civ. P.
50(a)(1)). S&N, as the plaintiff, bears the burden of proof
to show the presence of every element or its equivalent in
the RetroButton® device. See, e.g., Uniloc USA v. Micro-
soft Corp., 632 F.3d 1292, 1301 (Fed. Cir. 2011). In-
fringement is a question of fact that we review for
substantial evidence. Id.Arthrex argues that it is entitled to JMOL because
S&N failed to offer any evidence at trial that the Retro-
Button® contains “a graft connection element comprising
a sling member.” Arthrex argues that S&N failed to show
that a “sling member” is a part of the “graft connection
element” but instead attempted to prove the opposite –
that the “graft connect element” is a part of the “sling
member.”
S&N contends that “Arthrex’s argument is a distinc-
tion without a difference.” Appellant’s Br. 41. S&N
argues that we should affirm the district court’s denial of
JMOL because it presented sufficient evidence at trial for
SMITH & NEPHEW v. ARTHREX 6
the jury to find that the RetroButton® has both a “sling
member” and a “graft connection element” as defined by
the district court. Dr. Sebastianelli’s (S&N’s expert
witness) cross-sectional schematic of the RetroButton®
device best illustrates S&N’s infringement contentions
regarding these key limitations:
J.A. 2778. As shown in the schematic, S&N contends that
the entire loop of material that supports the graft is the
claimed “sling member” and that the three strands of
material at the bottom portion of the loop are the claimed
“graft connection element” (abbreviated as GCE). Under
S&N’s theory, the “graft connection element” is a portion
of the “sling member,” but the “graft connection element”
does not include the entire “sling member” structure.
We agree with Arthrex. S&N’s theory of infringement
is inconsistent with the plain language of Claim 8. As the
district court correctly noted in its claim construction
7 SMITH & NEPHEW v. ARTHREX
order, “Claim 8 of the ’588 patent states, in relevant part,
‘a graft connection element comprising a sling member . .
.’ Thus, the graft connection element includes at least a
sling member.” J.A. 20. Given the district court’s con-
struction of “sling member” (which neither party appeals),
the “graft connection element” must include a “loop of
material that supports the graft.” J.A. 20. If the Retro-
Button® device’s graft connection element is limited to
the three strands of material between the holes (as S&N
contends), then it does not include “a loop of material.”
S&N failed to present any evidence that the Retro-
Button® device contained the claimed “graft connection
element comprising a sling member [a loop of material].”
Additionally, S&N offered no evidence that the “graft
connection element” included the equivalent of a “sling
member.” See Appellee’s Br. 23 (“[T]he only claim re-
quirements that were proven equivalently were the
location of the holes and the district court’s requirement
that the ‘trailing filament’ be ‘distinct’ from the material
used to support the graft.”); see also Oral Argument
19:22-19:53.
Claim 8 further requires “a portion of said body . . .
being configured for attaching to said body the graft
element connection.” ’588 patent col.7 ll.13-17. The
specification of the ’588 patent teaches that the “graft
connection element” attaches directly to this portion of the
body. See, e.g., ’588 patent col.2 ll.1-4 (“The body further
defines at least one means for attaching to the body . . . a
graft connection element which is in turn connected to the
graft.”). The preamble of the ’588 patent recognizes this
relationship: “[t]he body further defines at least one
element for attaching to the body either a graft or a graft
connection element which is in turn connected to the
graft.” The embodiments of the invention described in the
’588 patent indicate that the “graft connection element” is
SMITH & NEPHEW v. ARTHREX 8
directly attached to the “portion of said body” between the
holes in the leading and trailing ends. See, e.g., id. col.6
ll.13-17. Under the district court’s construction (which
neither party appeals) the “graft connection element”
must be located “between the hole in the leading end and
the hole in the trailing end” and it must be “distinct from
the material located in said holes.” J.A. 17. In other
words, it must attach to “a portion of said body disposed
between said hole in said leading end and said hole in
said trailing end.”
As illustrated in Dr. Sebastianelli’s cross-sectional
schematic above, the RetroButton® device’s alleged “graft
connection element” does not attach to any portion of the
device’s body. Even if Claim 8 is broad enough to allow
for indirect attachment, under S&N’s theory of infringe-
ment the “graft connection element” does not attach to the
portion of the body between the holes in the trailing and
leading ends as the claim requires. S&N’s contention that
the graft connection element of Claim 8 is satisfied by the
three strands on the bottom portion of the sling is incon-
sistent with the plain language of the claim itself. Claim
8 expressly requires that the graft connection element
include the loop of material (the sling) and that it attach
to the portion of the body between the holes. The accused
portion of the RetroButton® device (the three strands of
material at the bottom of the sling) does not meet either
of these requirements. Therefore, Arthrex has failed to
offer substantial evidence to support its accusation that
the RetroButton® device infringes Claim 8. Because
there is no evidence of record supporting the jury’s verdict
that the RetroButton® infringes the ’588 patent, JMOL is
appropriate, and we must reverse. In light of this hold-
ing, we need not address Arthrex’s other arguments on
appeal.
REVERSED