CAFC Issues Split Decision on the Meaning of "Transverse Holes"

Acumed LLC v. Stryker Corp. (06-1260), April 12, 2007

The CAFC reviewed the district court's finding of willful infringement of Acumed's patent on orthopedic devices for the treatment of fractures to the upper arm. Stryker argued that the district court erroneously construed numerous claim terms, including the term "transverse holes":

An elongated tapered nail for securing fractures of the proximal humerus comprising:

. . . 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 angularly offset from each other . . .

The district court defined "transverse holes" as "holes across the butt portion of the nail." Stryker argued that this term should mean holes that are perpendicular to the nail shaft, since every description of the transverse holes in the patent only teaches a perpendicular hole.

While the majority acknowledged that every description in Acumed's patent showed a perpendicular hole, the court refused to read this limitation into the claim under Phillips.

The plain meaning of Claim 1 covers more than the particular embodiment shown in the figures. While the disclosed embodiment possesses "perpendicular" holes, the claim language covers all "transverse" holes—a word that does not necessarily imply right angles. Moreover, the patentees’ description of their preferred embodiment itself implies a difference between the words "perpendicular" and "transverse." The written description states that Figure 2 "illustrates a plurality of transverse holes, each of which is . . . perpendicular to the portion of the nail axis at the butt portion 14 of the nail" . . . This implies that a "transverse" hole need not be "perpendicular" - if it were, the patentee would not have needed to clarify that these holes, in addition to being transverse, were perpendicular to the nail axis. Just as in Phillips, where the asserted claim mentioned "steel baffles" and hence "strongly implie[d] that the term 'baffles’ does not inherently mean objects made of steel," 415 F.3d at 1314, this usage of language is strong evidence that the patentee considered "transverse" and "perpendicular" to have distinctly different meanings.

The intrinsic evidence of the specification therefore suggests that the patentees knew how to restrict their claim coverage to holes passing through at right angles. They could have used the word "perpendicular," as they did in discussing their preferred embodiment. Instead, they chose a different term that implies a broader scope. The intrinsic evidence does not indicate that one of skill in the art would believe the patentees meant "perpendicular" when they said "transverse."

The majority also found that the specification phrase "each of which is defined" does not imply a lexicographic definition, and especially not a definition of "transverse" to mean "perpendicular" (e.g., "the butt portion . . . defining a plurality of at least three transverse holes, each defining a hole axis"; "the curved shank includes a curved portion defining a curved central axis"; "the butt portion defines a central axis").

Also, the majority discounted the fact that the inventor of Acumed's patent filed a related application, where the transverse holes were clearly defined as perpendicular in nature. Relying on Phillips, the majority concluded that "the specification and claims of the ’444 patent itself should be given significantly greater weight. "

Judge Moore's Dissent: In a strongly worded (13 page) dissent, Judge Moore took issue with the manner in which the district court established its claim construction. For one, the claim construction hearing occurred prior to Phillips. Second, Moore pointed out that the district court started the claim construction by turning to a common English language dictionary, published ten years after the issuance of Acumed's patent. Furthermore, there were two definitions for "transverse" offered by the dictionary, and the district court chose the broader definition, because it found no express disavowal of claim scope in the specification. Under Phillips, Moore argued that such an approach was clearly improper.

Moore also argued that the public notice of a patent's scope becomes muddles when courts construe claim terms to have meanings broader that the meaning derived from the intrinsic evidence. Since Acumed's patent only discloses a perpendicular hole, "it is inappropriate to give that term a broader interpretation, particularly where the only support for the broader interpretation is extrinsic evidence—in this case, a dictionary (which supports the narrower construction as well). "

Finally, Moore lets off this parting shot at the majority:

Tellingly, the majority opinion offers no other support—intrinsic or extrinsic—for its construction, and in fact, offers no explanation at all for its conclusion that "the claim language covers all ‘transverse’ holes—a word that does not necessarily imply right angles." What, if not the specification, is the majority using to determine the plain meaning of this term? The district court based its conclusion regarding the plain meaning of transverse on Webster’s Dictionary, which it acknowledged supported both the definition across and perpendicular. In the present case, as in Nystrom, I see no reason why we should adopt one, broader, plain meaning of the term "transverse" when there is another plain meaning that is completely consistent with the intrinsic evidence. When one begins with the patent specification, in my opinion, there is no doubt which of the two meanings of "transverse" is correct.

I'm losing track of this, but Acumed is now the 13th or 14th split decision on a claim construction issue since Phillips (which is almost a 300% increase over the Pre-Phillips days).