Acumed LLC v. Stryker Corporation

483 F.3d 800, 82 U.S.P.Q. 2d (BNA) 1481, 2007 U.S. App. LEXIS 8375, 2007 WL 1086539
CourtCourt of Appeals for the Federal Circuit
DecidedApril 12, 2007
Docket2006-1260, 2006-1437
StatusPublished
Cited by128 cases

This text of 483 F.3d 800 (Acumed LLC v. Stryker Corporation) is published on Counsel Stack Legal Research, covering Court of Appeals for the Federal Circuit primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Acumed LLC v. Stryker Corporation, 483 F.3d 800, 82 U.S.P.Q. 2d (BNA) 1481, 2007 U.S. App. LEXIS 8375, 2007 WL 1086539 (Fed. Cir. 2007).

Opinions

Opinion for the Court filed by Circuit Judge GAJARSA. Dissenting opinion filed by Circuit Judge MOORE.

GAJARSA, Circuit Judge.

This patent infringement case deals with orthopedic devices for the treatment of fractures to the upper arm. Defendants Stryker Corp., Stryker Sales Corp., Stryker Orthopaedics, and Howmedica Osteon-ics Corp. (collectively, “Stryker”) appeal from the final judgment of the United States District Court for the District of Oregon, following a jury trial, finding Stryker liable to plaintiff Acumed LLC (“Acumed”) for willful infringement of U.S. Patent No. 5,472,444 (“the '444 patent”). We affirm the district court’s findings of infringement and willfulness, but vacate the permanent injunction issued against Stryker and remand for reconsideration in light of the Supreme Court’s decision in eBay Inc. v. MercExchange, LLC, — U.S. -, 126 S.Ct. 1837, 164 L.Ed.2d 641 (2006).

I. BACKGROUND

A. The Technology and Patent

Acumed is the assignee of the '444 patent, which is directed to an orthopedic nail for the treatment of fractures in the humerus (the upper arm bone which ends in the shoulder ball at top and the elbow joint at the bottom). In the most common form of fracture to this bone, the patient falls on top of his or her arm, breaking the shoulder ball (the “humeral cortex”) off from the longer part of the bone (the “humeral shaft”). Sometimes the humeral cortex itself breaks into two or three pieces as well. See '444 patent col.l 11.17-27. Orthopedic surgeons use nails like the one disclosed in the patent to treat this type of fracture by excavating a hole through the humeral cortex and down the humeral shaft, inserting the nail into the hole, then fixing it in place using bone screws that pass through holes in the nail. This procedure secures the bone pieces of the cortex to each other and to the shaft.

Claim 1 of the '444 patent contains every limitation disputed on appeal by the parties. It reads:

An elongated tapered nail for securing fractures of the proximal humerus comprising: [803]*803an elongated body having a curved shank configured to occupy an upper portion of the proximal humeral shaft, and a contiguous butt portion extending proximally from the shank and configured to occupy the humeral cortex;
the butt portion being shorter than the shank and defining a plurality of at least three transverse holes, each defining a hole axis, with the three hole axes angu-larly offset from each other, such that the holes may receive fasteners attached to fragments of the humeral cortex.

'444 patent col.5 11.44-50 (disputed terms emphasized).

B. Stryker’s Dealings with Opinion Counsel

On August 28, 2002, Stryker’s German patent attorney, Edo Graalfs, wrote a letter to his American counterpart, Raymond W. Augustin, regarding the humeral nail Stryker was in the process of developing. Graalfs expressed concern that the Stryker nail might infringe the '444 patent:

[T]he independent claim 1 of this U.S. patent has a relatively brought [sic, “broad”] scope of protection.... I advised that the nail must not be provided with a curvature as this is a feature of independent claim 1. Now it turned out that for business reasons it would be a requirement to also use a curved shank. I expressed my doubts ... that it could be possible to find a structure not covered by the mentioned U.S. patent.

Augustin then placed a memorandum to file dated December 13, 2002, in which he echoed Graalfs’ concerns:

[T]he Stryker Trauma humeral nail would have each and every element of claim 1 ... of the '444 patent.... [I]t is our opinion that there is no strong invalidity argument which could be used against all the '444 issued claims based on the prior art known at this time.... In conclusion, it is our opinion that a curved version of the Stryker Trauma humeral nail ... should not be marketed in the United States.

Testimony at trial indicated that the Stryker nail eventually sold in the United States did not differ in any relevant respect from the design specifications reviewed by Graalfs and Augustin in writing these letters.

After his initial memorandum to file, Augustin drafted a formal opinion of counsel letter and transmitted it to Stryker on November 19, 2003. This opinion letter was longer and more detailed than the earlier memo to file. In it, Augustin concluded — using claim construction arguments basically identical to those made by Stryker during this litigation — that the Stryker nail would not infringe any claim of the '444 patent either literally or by equivalents. He also expressed a belief that Claim 1 of the '444 patent was invalid due to anticipation by an earlier Stryker product.1

At trial, Acumed presented evidence tending to show that Stryker did not seriously rely upon the later opinion letter from Augustin. For instance, Stryker filed with the FDA its application for the accused device on August 14, 2003, some months before Augustin transmitted the favorable opinion letter. Gregory Plakson, Stryker’s Director of Intellectual Property, testified at his deposition that he did not understand portions of the opinion letter and did not ask Augustin anything about the opinion. Acumed also presented evidence tending to show copying by Stryker, including that a Stryker consultant “confiscated” from an operating room a how-to [804]*804chart detailing the assembly and insertion of Acumed’s product.

C. Litigation background

Stryker began to sell its accused humeral nail in the United States in early 2004. In April 2004, Acumed filed suit against Stryker in the District of Oregon, alleging infringement of Claims 1, 3-5, 10, 11, and 14-17 of the '444 patent. Following a Markman hearing, the district court construed the disputed terms. It defined “curved shank” as “a shank that has a bend or deviation from a straight line without sharp corners or sharp angles” and “transverse holes” as “holes across the butt portion of the nail.” It also found that

the term “angularly offset from each other” means the axes of the three holes are spaced apart from each other, an angle is formed by the axes of any two such holes when viewed in two dimensions from the butt end or from the side, and the axes are not aligned in a parallel orientation.

Acumed LLC v. Stryker Corp., No. 04-CV-513-BR (D.Or. Oct. 14, 2004) (“Order on Claim Construction”). The case proceeded to jury trial on infringement, willfulness, and invalidity. The jury found that the asserted claims were valid, that Stryker’s product literally infringed those claims, and that Stryker’s infringement was willful. The district court denied Stryker’s motion for judgment notwithstanding the verdict and awarded Acumed enhanced damages for willful infringement, increasing the damages found by the jury by fifty percent. It permanently enjoined Stryker from selling the accused device in the United States.

Stryker appeals the jury verdict of infringement and willfulness and the district court’s grant of injunctive relief. This court has jurisdiction pursuant to 28 U.S.C. § 1295(a)(1).

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483 F.3d 800, 82 U.S.P.Q. 2d (BNA) 1481, 2007 U.S. App. LEXIS 8375, 2007 WL 1086539, Counsel Stack Legal Research, https://law.counselstack.com/opinion/acumed-llc-v-stryker-corporation-cafc-2007.