IP Law Daily Willful infringement of ‘pulsed lavage’ invention affirmed; attorney fees, treble damages awards vacated
Monday, September 12, 2016

Willful infringement of ‘pulsed lavage’ invention affirmed; attorney fees, treble damages awards vacated

By Mark Engstrom, J.D.

Three Stryker patents on "pulsed lavage devices" were willfully infringed by Zimmer Inc. and Zimmer Surgical, the U.S. Court of Appeals for the Federal Circuit has ruled. The patents in suit—U.S. Patent Nos. 6,022,329; 6,179,807; and 7,144,383—covered devices that delivered pressurized irrigation for medical therapies such as wound cleaning and orthopedic procedures. A district court’s judgment of patent validity and willful infringement was affirmed, as was its award of lost profits, but its treble damages award, exceptional case finding, and award of attorney fees were vacated and remanded (Stryker Corp. v. Zimmer, Inc., September 12, 2016, Prost, S.).

Lawsuit. Stryker Corp., Stryker Puerto Rico, and Stryker Sales Corp. (collectively, "Stryker") sued Zimmer, Zimmer Surgical, and Zimmer Orthopaedic Surgical Products (collectively, "Zimmer") for patent infringement. According to Stryker, Zimmer’s "Pulsavac Plus Plus" devices infringed various claims of the asserted patents.

The district court granted partial summary of judgment infringement, in favor of Stryker, finding that Zimmer had infringed the asserted claims of the ’807 patent and the ’383 patent. The issue of Zimmer’s infringement of a single claim of the ’329 patent, as well as Zimmer’s invalidity defenses against all of the asserted claims, were decided by a jury.

The jury found that all of the asserted claims were valid. It also found that the accused products infringed Claim 2 of the ’329 patent. The jury awarded $70 million in lost profits, concluded that Zimmer had willfully infringed all three patents, and found that Stryker had marked nearly all of its products that commercially embodied the patents-in-suit.

The district court rejected Zimmer’s motions for judgment as a matter of law (JMOL) on various issues, awarded trebled damages for willful infringement, found the case to be exceptional, awarded attorney fees to Stryker, imposed a permanent injunction, and entered final judgment pursuant to its order. Zimmer appealed.

The ’329 patent. The only asserted claim of the ’329 patent—Claim 2—described features of a pulsed-irrigation "handpiece." According to Claim 2, the handpiece comprised a "hollow housing" that included a "handle" and an "electric motor spaced between the top and bottom of said handle and located in said handle" adjacent to an irrigation tube within the housing. Zimmer argued that the motor in the accused Pulsavac Plus device was located in the "nub" of the handpiece—i.e., in the protrusion behind the barrel—and not in the handle itself.

At trial, Stryker presented evidence to show that a medical professional could hold Zimmer’s Pulsavac Plus device by the nub behind the barrel, where the motor was located. In addition, Stryker presented evidence to show that the barrel of the Pulsavac Plus was called a "barrel grip" in an associated patent application. Finally Stryker presented evidence to show that the barrel included indentations that would allow the device to be used while being held by the barrel.

Ultimately, Stryker convinced the jury that, if the nub behind the barrel was shaped so that it could be held, then the nub would be "a portion of the device designed to be held by hand," in accordance with the district court’s construction of "handle."

In light of the evidence presented at trial as a whole, along with the prosecution history, the court could not find that reasonable minds would come to the conclusion that Zimmer did not infringe Claim 2 of the ’329 patent.

The ’807 patent. Zimmer’s appellate argument focused on whether the accused products included a "front end for receiving the discharge tube and the suction tube," a limitation that described the interface between the nozzles at the front end of the handpiece and the nozzles of a removable tip that included the discharge and suction tubes. According to Zimmer, the accused devices did not infringe because the claim language required male openings on the tip, which fit into female nozzles on the handpiece, but the accused devices had female openings on the tip, which fit into male nozzles on the handpiece.

The district court found that Zimmer’s reading of the term "receive" was "artificially narrow." According to the district court, the word "receives" could only mean that one part of the device connected directly to another part of the device. For that reason, the district court concluded that Zimmer had infringed the ’807 patent.

The Federal Circuit considered it a "close" call, but could not find that the district court had erred in granting summary judgment of infringement based on the evidence of record.

With respect to the validity of the ’807 patent, the jury found that Zimmer’s Var-A-Pulse device did not anticipate the asserted claims of the ’807 patent. In light of the record evidence, the Federal Circuit decided that a reasonable jury could have reached that verdict. The invalidity judgment regarding the ’807 patent was therefore affirmed.

The ’383 patent. At trial, Zimmer argued that the asserted claims of the ’383 patent were obvious at the time of the invention, in light of U.S. Patent No. 5,046,486 (Grulke), U.S. Patent No. 4,817,599 (Drews II), and U.S. Patent No. 5,350,356 (Bales). Zimmer argued that all of the limitations of the asserted claims of the ’383 patent were collectively present in the prior art.

Stryker did not dispute that point directly. Instead, it argued that a person of ordinary skill in the art would not have been motivated to combine those references because the designs that were claimed by Grulke and Drews II each excluded certain components that were described in the claims. More specifically, Grulke disclosed a pulsed lavage system that used a pneumatic motor, not an electric motor, and Drews II disclosed a pulsed irrigation system that was powered by an electric motor that was used as an eye wash.

Based on the trial record, the Federal Circuit agreed with the district court that a reasonable jury could conclude that a person of ordinary skill in the art would not have been motivated to combine Grulke and Drews II, even in light of the patent examiner’s rejection of related claims on the basis of that combination. In the appellate court’s view, the evidence was sufficient to affirm the district court’s determination that Zimmer did not show that the asserted claims of the ’383 patent were obvious. For that reason, the Federal Circuit affirmed the district court’s finding that those claims were not obvious over the combination of Grulke, Drews II, and Bales.

Enhanced damages. In making its willfulness determination, the district court applied the Seagate standard, which the Federal Circuit had articulated in In re Seagate Technology, LLC, 497 F.3d 1360 (2007). The Seagate standard required a patentee to establish, by clear and convincing evidence, that: (1) there was an objectively high likelihood that the actions of the accused infringer constituted patent infringement and (2) the infringement risk was either known or "so obvious that it should have been known" to the accused infringer.

In Halo Electronics, Inc. v. Pulse Electronics, Inc., 136 S.Ct. 1923 (2016), the Supreme Court rejected the Seagate approach and explained that the subjective willfulness of a patent infringer could warrant enhanced damages without regard to whether the infringement was objectively reckless. The Supreme Court also rejected the use of a clear and convincing standard in favor of a preponderance of the evidence standard.

Because the jury had made its willfulness determination under the clear and convincing standard—a standard that was higher than the current standard—the Federal Circuit affirmed the judgment of willful infringement.

Attorney fees. The district court’s award of attorney fees was based solely on its finding that Zimmer was liable for willful infringement. The Federal Circuit upheld the willfulness finding, but also found that the willfulness finding did not mean that the case was exceptional.

Because additional allegations of litigation misconduct had been made, and because the "exceptional case" standard had changed, the Federal Circuit remanded the issue of attorney fees to the district court for further consideration.

The case is No. 2013-1668.

Attorneys: Sharon Hwang, Deborah Laughton, and Stephanie Samz (McAndrews, Held & Malloy, Ltd.) for Stryker Corp., Stryker Puerto Rico, Ltd., and Stryker Sales Corp. Seth P. Waxman, Thomas Saunders, Rebecca A. Bact, and Mark Christopher Fleming (Wilmer, Cutler, Pickering, Hale and Dorr, LLP) and Donald Robert Dunner (Finnegan, Henderson, Farabow, Garrett & Dunner, LLP) for Zimmer, Inc., and Zimmer Surgical, Inc.

Companies: Stryker Corp.; Stryker Puerto Rico, Ltd.; Stryker Sales Corp.; Zimmer, Inc.; Zimmer Surgical, Inc.

MainStory: TopStory Patent FedCirNews

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