Federal Circuit Affirms Non-Infringement and Untimely Assertion of DOE Infringement

federal-circuit-cafc-5aHowmedica Osteonics Corp. v. Zimmer, Inc., (Fed. Cir. May 12, 2016) (Before O’Malley, Plager, and Wallach, J.) (Opinion for the court, Plager, J.) Click Here for a copy of the opinion.

In a case relating to socket assemblies for prosthetic hip implants, Howmedica Osteonics Corp. and Stryker Ireland Ltd. (“Stryker”) appealed from a district court ruling of non-infringement. This conclusion was based on a claim construction ruling, and the court’s decision to not allow an infringement argument under the doctrine of equivalents (“DOE”).

The Federal Circuit found that the specification explicitly supported the district court’s claim construction, which precluded a finding of infringement.  Two passages specified the meaning of, and provided context for, a claim term that referred to the relative location among certain claim elements.  A “relative location” claim term is often read in light of, and by relying on, the written description.  Because the district court’s claim construction was proper, the Court found the grant of summary judgment of non infringement was proper.

The Federal Circuit also found that the district court did not abuse its discretion by refusing to allow Stryker to assert infringement under a DOE theory.  Stryker’s infringement contentions (i) failed to assert a DOE theory, except for a generic reservation of rights, and (ii) never sought to amend to include a DOE theory.  The Court further relied upon New Jersey’s Local Patent Rules, which particularly provide a procedure for seeking leave to amend contentions following a Markman ruling, which Stryker did not follow.  Thus, the Court found no abuse of discretion with respect to the district court’s denial of Stryker’s request to assert a DOE theory of infringement, and affirmed the ruling below.



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Joseph Robinson

Joseph Robinson has over 20 years of experience in all aspects of intellectual property law. He focuses his practice in the pharmaceutical, life sciences, biotechnology, and medical device fields. His practice encompasses litigation, including Hatch-Waxman litigation; licensing; counseling; due diligence; and patent and trademark prosecution. He has served as litigation counsel in a variety of patent and trademark disputes in many different jurisdictions, and has also served as appellate counsel before the Court of Appeals for the Federal Circuit. Joe also focuses on complex inter partes matters before the U.S Patent and Trademark Office, inventorship disputes, reexaminations and reissues. His experience includes numerous interferences, a particular advantage in new U.S. Patent and Trademark Office post-grant proceedings. He also counsels on patent–related U.S. Food and Drug Administration issues, including citizen petitions, Orange Book listing, and trademark issues. For more information and to contact Joe please visit his profile page at the Troutman Sanders website.

Joseph Robinson

Robert Schaffer is an intellectual property partner at Troutman Sanders. Bob applies more than 30 years of experience to IP counseling and litigation. His work includes patent procurement, strategic planning and transactional advice, due diligence investigations, district court patent cases, and Federal Circuit appeals. He regularly handles complex and high-profile domestic and international patent portfolios, intellectual property agreements and licensing, IP evaluations for collaborations, mergers, and acquisitions. In disputed court cases Bob’s work includes representing and counseling client in ANDA litigations, complex patent infringement cases and appeals, and multidistrict and international cases. In disputed Patent Office matters his work includes representing and counseling clients in interferences, reexaminations, reissues, post-grant proceedings, and in European Oppositions. For more information and to contact Bob please visit his profile page at the Troutman Sanders website.

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