Patent Law

Kneed

By Gary Odom and Jordan Kuhn

Orthopedic implant makers Howmedica Osteonics and Wright Medical got into a patent brawl. They settled. A few times. Sort of. Howmedica sued again over 5,824,100, claiming a knee prosthesis, and lost its infringement kick on claim construction, which it appealed. Ambiguous claim language led to a construction Mexican standoff in the courts.

Howmedica Osteonics v. Wright Medical Technology (CAFC 2007-1363)

Plain language on plain language -

"It is a 'bedrock principle' of patent law that 'the claims of a patent define the invention to which the patentee is entitled the right to exclude.'" Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (quoting Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)).

Wright argued that inventor testimony compelled a favorable construction. Whatever the inventor has to same amounts to baby babble when it comes to claim construction.

The testimony of an inventor "cannot be relied on to change the meaning of the claims." Markman v. Westview Instruments, Inc., 52 F.3d 967, 983 (Fed. Cir. 1995) (en banc), aff'd, 517 U.S. 370 (1996); see also Hoechst Celanese Corp. v. BP Chems. Ltd., 78 F.3d 1575, 1580 (Fed. Cir. 1996) ("Markman requires us to give no deference to the testimony of the inventor about the meaning of the claims."). In particular, we have explained that "[t]he subjective intent of the inventor when he used a particular term is of little or no probative weight in determining the scope of a claim." Markman, 52 F.3d at 985.

The claim construction reversal on appeal went 2-1, Judges DYK and Hochberg in majority, Judge Prost dissented, agreeing with the district court. Apparently, plain language the claims were not.

Contract law got a workout in the decision, owing to sloppy multifarious settlements.

The only clear winner here: lawyers.

Full post as published by The Patent Prospector on September 03, 2008 (boomark / email).