Addressing the issue of claim construction, the U.S. Court of Appeals for the Federal Circuit found that a lower court erred in its claim construction while affirming a finding that the plaintiff did not release its infringement claim as a part of an earlier settlement agreement asserted by the defendant as a basis for an affirmative defense. Howmedica Osteonics Corp., v. Wright Medical Technology, Inc., Case No. 07-1363 (Fed. Cir., Sept. 2, 2008) (Dyk, C.J.; Prost, C.J. dissenting).
Howmedica is the owner of a patent with claims to an artificial knee prosthesis to replace part or all of the knee joint. Claim 15, the only independent claim asserted, recites a knee prosthesis with a "femoral component including at least one condylar element" and requires that the condylar element have a certain geometry. The parties had agreed that claim 15 can cover a unicondylar prosthesis, where only one artificial condyle is employed and one natural condyle remains. However, based on the use of the plural "condyles" throughout the patent specification, "the importance of having the same radii on both condylar elements" to achieving the benefits of the patent and the testimony of the inventor, the district court concluded that in a bicondylar prosthesis, where both condyles are replaced, "both condyles must meet [the geometric] requirements." Since Howmedica could not show that both condylar elements of the accused product meet geometric limitations of claim 15, the court found judgment of non-infringement.
The Federal Circuit, using plain language to interpret the claim term "the condylar element," reached the conclusion that the district court erred and held that the claim requires only one of the condylar elements to meet the specified geometric limitation. According to the Court, if the patentee had intended both condyles in a bicondylar prosthesis to meet these limitations, he could have used the claim language to achieve that result by reciting that "each condylar element," rather than "the condylar element," conforms to the geometric requirements.
The second issue on appeal was related to the validity of the affirmative defense raised by the defendant. The parties had entered into a settlement agreement in connection with an earlier patent litigation in New Jersey. The New Jersey settlement was reached after the patent was granted, but before the initiation of the current litigation and contained a clause that would release the defendant from any claims by Howmedica "including, but not limited to, any and all claims and counter claims that were or could have been asserted by Howmedica in the lawsuit." The district court, by looking at another related agreement signed by the same parties at the same time in connection with another case in Massachusetts, interpreted the release clause in the New Jersey case narrowly and granted summary judgment in favor of Howmedica. The Court affirmed district court's judgment.
In dissent, Judge Prost argued that "the fact that a claim could have been drafted more clearly is not, by itself, a sufficient basis to adopt a particular interpretation of claim language."
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