Introduction: The claim construction issues here are interesting, include the question of how attorney-inventor communications impact claim construction. In addition the court takes a surprising approach to limit the scope of a prior settlement agreement.
HowMedica Osteonics v. Wright Medical (Fed. Cir. 2008)
Howmedica’s U.S. Patent No. 5,824,100 claims artificial knee prosthesis. After a claim construction decision, Howmedica admitted that it could not prove infringement and appealed. Wright cross-appealed – arguing that the case was moot based on a prior settlement agreement and “release” between the parties.
In a 2-1 majority opinion Judge Dyk found that the lower court erred in its claim construction. This is a case where de novo review impacts the result. As Judge Dyk states, “[a]lthough this is a close case, we disagree.” With de novo review, simple disagreement leads to reversal.
The claim introduced a “femoral component including at least one condylar element.” The claim also required “the condylar element” have certain geometric limitations. The issue for claim construction is whether each and every condylar element must have those geometric limitations. The lower court said yes, Judge Dyk said no. In dissent, Judge Prost points out that it would have been quite easy for the patent applicant to clarify its intent.
Patent Attorney Communications: As part of its claim construction argument, Wright presented the contents of an e-mail between the patent prosecution attorney and the patent applicant considering potential limitations in the claims. The majority rejected that document as merely extrinsic evidence to be used only to “help educate the court regarding the field of the invention and can help the court determine what a person of ordinary skill in the art would understand claim terms to mean.” Quoting Phillips.
The letter Wright relies on, reporting to the inventor on the results of an examiner interview, achieves neither of these objectives and is of no value to the construction of the disputed claim language.
Intent of the Release: A second issue on appeal was the impact of a prior settlement agreement between the parties. A plain meaning of the agreement released Wright from all future patent claims. In particular, the agreement released the defendant from “any and all manner of claims . . . that Howmedica . . . has, ha[s] had, or may have against Wright Medical . . . including, but not limited to, any and all claims and counterclaims that were or could have been asserted.” Both the district and appellate courts, however, found that the plain meaning should not apply because neither party intended the release be so broad. As evidence, the court relied on a parallel agreement that was much narrower.