Spineology, Inc. v. Wright Medical Technology Inc.

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
SPINEOLOGY, INC.,
Plaintiff-Appellant
v.
WRIGHT MEDICAL TECHNOLOGY, INC., A
DELAWARE CORPORATION,
Defendant-Appellee
______________________
2017-2388
______________________
Appeal from the United States District Court for the
District of Minnesota in No. 0:15-cv-00180-JNE-FLN,
Judge Joan N. Ericksen.
______________________
Decided: July 6, 2018
______________________
RANDALL THOMAS SKAAR, Skaar Ulbrich Macari, P.A.,
Minnetonka, MN, argued for plaintiff-appellant.
ANTHONY JAMES FITZPATRICK, Duane Morris LLP,
Boston, MA, argued for defendant-appellee. Also repre-
sented by CHRISTOPHER S. KROON; DIANA SANGALLI,
THOMAS W. SANKEY, Houston, TX.
______________________
2 SPINEOLOGY, INC. v. WRIGHT MEDICAL TECHNOLOGY INC.
Before DYK, O’MALLEY, and HUGHES, Circuit Judges.
DYK, Circuit Judge.
Spineology, Inc. (“Spineology”) is the owner of U.S.
Patent No. RE42,757 (“the ’757 patent”) covering a surgi-
cal device. Spineology sued Wright Medical Technology,
Inc. (“Wright Medical”) for infringement in the District of
Minnesota. The district court found claims 15, 21–23, and
35 invalid as indefinite and granted summary judgment
of non-infringement as to claims 33 and 34. Because the
court correctly construed “body” and there is no infringe-
ment under this construction, we affirm the grant of
summary judgment as to claims 33 and 34. Wright Medi-
cal agrees that this construction moots the issues of
invalidity as to the remaining asserted claims (since these
claims also include the body limitation, and accordingly,
these claims are not infringed). We remand, with direc-
tions that the district court vacate the judgment of inva-
lidity as to claims 15, 21–23, and 35, and enter judgment
of non-infringement as to those claims.
BACKGROUND
Spineology’s ’757 patent relates to an expandable
reamer to be used in surgery that cuts “hollow chambers
within bone that are larger in diameter than the external
opening into the chamber. The tool has a distal end with
external dimensions sized to be passed through the pa-
tient's anatomy to a point of entry into the bone.” ’757
Patent col.1 ll. 60–64. Wright Medical manufactures and
sells its own expandable reamer known as the X-Ream.
Spineology sued Wright Medical in the District of Minne-
sota, alleging infringement of claims 15, 21–23, 33, 34,
and 35 of the ’757 patent. Wright Medical countered that
the term “activation mechanism” appearing in independ-
ent claims 15, 33, and 35, and by dependence in claims
21–23 and 34, was indefinite. Claim 15 reads in full:
SPINEOLOGY, INC. v. WRIGHT MEDICAL TECHNOLOGY INC. 3
An expandable reamer for use in bone and related
tissue in a mammal comprising:
an elongated hollow body having a proximal end
and a distal end, sized and configured to engage
bone and related tissue in the mammal;
an elongated blade carrier having a proximal end
and a distal end, the blade carrier disposed within
the body;
a set of blades pivotally attached proximate the
distal end of the blade carriers; the set of blades
having at least a first retracted position relative
to the body, the body having a maximum cross-
sectional diameter transverse to a longitudinal ax-
is of the body that is substantially at least as large
as a maximum cross-sectional diameter of the
blades in the first retracted position, and a second
fully expanded position having a diameter greater
than the maximum cross-sectional diameter of the
body; and
an manually actuated activation mechanism that
moves the set of blades from the first retracted
position to the second fully expanded position and
any expanded position therebetween.
’757 Patent col. 8 ll. 40–59 (emphasis added). Claims 21
through 23 depend from claim 15, and provide more detail
about the reamer. Claim 33 is an independent method
claim reading:
A method for creating a cavity in bone comprising:
drilling a bore in bone,
inserting an expandable reamer into the bore,
manually actuating an activation mechanism of
the reamer that engages a blade carrier within
the reamer such that linear motion of the blade
4 SPINEOLOGY, INC. v. WRIGHT MEDICAL TECHNOLOGY INC.
carrier drives a blade set pivotally attached to the
blade carrier from a first retracted position rela-
tive to the body, the body having a maximum
cross-sectional diameter transverse to a longitu-
dinal axis of the body that is substantially at least
as large as a maximum cross-sectional diameter of
the blades in the retracted position to a second
fully expanded position having a diameter greater
than the maximum cross-sectional diameter of the
body and any expanded position therebetween;
contacting the bone with the blade set in the any
expanded position; and
rotating the expandable reamer such that the
blade set cuts into the bone.
Id., col. 10 ll. 13–32 (emphasis added). Claim 34 depends
from claim 33. Finally, independent claim 35 also claims
“[a]n expandable reamer for use in bone and related
tissue in a mammal.” Id., col. 10 ll. 35–36. Relevant to
this appeal, all the claims require the body have
a maximum cross-sectional diameter transverse to
a longitudinal axis of the body that is substantial-
ly at least as large as a maximum cross-sectional
diameter of the blades in the retracted position to
a second fully expanded position [which] h[as] a
diameter greater than the maximum cross-
sectional diameter of the body and any expanded
position there between.
Id., col. 8 ll. 50–55, col. 10 ll. 22–28 (emphasis added). An
embodiment of Spineology’s device can be seen below.
SPINEOLOGY, INC. v. WRIGHT MEDICAL TECHNOLOGY INC. 5
’757 Patent fig. 1. In this figure, the main shaft is labeled
as 136, while the barrel is labeled 138. J.A. 38. The view
port, 232, can be seen on the barrel.
During claim construction, the parties disputed the
construction of the terms “activation mechanism” and
“body.” On August 20, 2016, the court issued a Markman
order ruling that the term “activation mechanism” was
indefinite as used in claim 15, in dependent claims 21–23,
and in claim 35. The court found that the term “activa-
tion mechanism” was a means-plus-function limitation,
with a discernable function, but no clear corresponding
structure for claims 15 and 35. The court noted that that
the term “activation mechanism” was defined differently
in different claims. For instance, while claim 18 states
6 SPINEOLOGY, INC. v. WRIGHT MEDICAL TECHNOLOGY INC.
that “the activation mechanism is a moveable cannulated
shaft having linear movement along the body,” ’757
Patent col. 8 l. 67–col. 9 l. 2, claim 20, which depends from
claim 18, states that “the activation mechanism is a blade
control knob constrained within the proximal end of the
body,” id., col. 9 ll. 11–13. Likewise, claim 38, which
depends from claim 35, states that “the activation mecha-
nism is one of a pair of shafts having linear movement
along the body,” id., col. 10 ll. 61–67, while claim 40,
which depends from claim 38, states that "the activation
mechanism is a blade control knob,” id., col. 11 ll. 4–6.
Because the other dependent claims, in combination
with the specification, provided conflicting information
about the activation mechanism, the court held that “[i]n
light of the inconsistencies between the claims and the
written description as to what constitutes the activation
mechanism, the Court is unable to discern a clear link
between a structure or structures and the function.” J.A.
29. The court held claims 15, 21–23, and 35 indefinite.
The court declined to construe body at that time, “except
to state that ‘body’ does not include the blade control
knob.” J.A. 22.
After the Markman hearing, on cross-motions for
summary judgment for infringement of claims 33 and 34,
the court determined that the term “body” which appears
in all the asserted claims means “the hollow structure
that houses the blade carrier and that receives a knob or
wheel: ‘body’ includes the barrel.” J.A. 46. This construc-
tion doomed Spineology’s infringement allegations, be-
cause it is undisputed that, when fully expanded, the
blades of Wright Medical’s X-Ream do not have a diame-
ter greater than the barrel. Because the X-Ream could
not infringe Spineology’s patent under a construction of
body that included the barrel, the court granted summary
judgment for Wright Medical of non-infringement of
claims 33 and 34. The court also dismissed without
prejudice Wright Medical’s counterclaims seeking, inter
SPINEOLOGY, INC. v. WRIGHT MEDICAL TECHNOLOGY INC. 7
alia, a declaration of absolute and equitable intervening
rights resulting from reissue proceedings of the patent.
Spineology appealed the judgment of non-
infringement of claims 33 and 34 and the judgment of
indefiniteness as to claims 15, 21–23, and 35. We have
jurisdiction pursuant to 28 U.S.C. § 1295(a)(1).
DISCUSSION
We first address the construction of the term “body.”
Since there is no extrinsic evidence relevant to claim
construction, we review claim construction under a de
novo standard. See Teva Pharm. USA, Inc. v. Sandoz,
Inc., 135 S. Ct. 831, 841 (2015). As noted, the district
court construed body to include the barrel and the shaft,
i.e., “body includes the barrel.” J.A. 46. The written
description does not use the term “body” and thus does
not provide relevant guidance. Spineology argues that,
while the shaft is part of the body, the barrel is not part of
the body.
We agree with the district court that the term “body”
must include the barrel. The dependent claims detail two
limitations that inform our construction of “body.” First,
claim 16 and claim 36 explain that the “body” must be a
structure that can include a “view port.” ’757 Patent col.
8 ll. 60–61; col. 10 ll. 56–57. Second, claims 20 and 40
provide that the “body” must be a structure that can
constrain a blade control knob “within the proximal end of
the body.” ’757 Patent col. 9 ll. 11–13; col. 11 ll. 4–6.
The specification makes clear that the structure
which includes these features is not the shaft, as would be
required under Spineology’s construction of body, but the
“enlarged barrel” at the proximal end of the reamer. The
“First Embodiment,” shown in Figs. 1–9, and the “Second
Embodiment,” shown in Figs. 10–17, are the only two
embodiments pictured in the patent. The First Embodi-
ment, pictured above, includes a “view port,” labeled 232,
8 SPINEOLOGY, INC. v. WRIGHT MEDICAL TECHNOLOGY INC.
on the barrel, not along the shaft. See, e.g., ’757 Patent
fig. 1. Similarly, in Figure 10, showing the Second Em-
bodiment, the view port 107 is clearly located along the
length of the barrel—not along the narrower cylindrical
shaft as would be necessary under Spineology’s construc-
tion. ’757 Patent fig. 10. In both embodiments, the blade
control knob, which claim 20 details is constrained within
the proximal end of the body, is clearly constrained within
the barrel, not the shaft.
Thus, Spineology’s proffered construction of body
would mean that the term “body” has one meaning in
certain claims and a different meaning in other claims.
This counsels strongly against interpreting body to only
include the shaft, as claim terms “cannot be interpreted
differently in different claims,” and “must be interpreted
consistently.” Southwall Techs., Inc. v. Cardinal IG Co.,
54 F.3d 1570, 1579 (Fed. Cir. 1995) (citing Fonar Corp. v.
Johnson & Johnson, 821 F.2d 627, 632 (Fed. Cir. 1987)).
A construction of body that includes the barrel comports
with the preferred embodiments and allows the term
“body” to have a consistent meaning across the independ-
ent and dependent claims.
While Spineology makes two arguments to the contra-
ry, neither is convincing. First, Spineology contends that
“[i]t was improper for the court to use unasserted claims
to teach attributes of ‘body’ not claimed in the asserted
claims.” Appellant Br. 27. However, no such principle
exists. Indeed, our decision in Phillips v. AWH Corp., 415
F.3d 1303, 1314 (Fed. Cir. 2005) (en banc), made clear
that “[o]ther claims of the patent in question, both assert-
ed and unasserted, can also be valuable sources of en-
lightenment as to the meaning of a claim term.” Second,
Spineology argues that the body must be “sized and
configured to engage bone,” and that the barrel is too
large to satisfy this limitation. However, Spineology
misreads the claims, as the claim language “sized and
configured to engage bone” describes the “distal end” of
SPINEOLOGY, INC. v. WRIGHT MEDICAL TECHNOLOGY INC. 9
the body, not the proximal end, where the barrel is locat-
ed.
Given the intrinsic evidence from the claims and the
specification, we agree with the lower court that the
“body” must include both the shaft and the elongated
barrel. Accordingly, we affirm the summary judgment of
non-infringement as to claims 33 and 34.
Wright Medical agrees that we need not reach the is-
sue of indefiniteness if we affirm the court’s construction
of the term “body.” This is so because all the claims found
to be indefinite also include the “body” limitation, and the
parties agree that Wright Medical’s accused products do
not infringe these claims under the construction of “body”
that we have adopted. Indeed, it is undisputed that,
when fully expanded, the cross-sectional diameter of the
blades of the X-Ream is smaller than the maximum cross-
sectional diameter of the “body,” and thus, cannot infringe
Spineology’s patent, which requires the blades to fully
expand to a diameter greater than the maximum cross-
sectional diameter of the “body.”
We accordingly vacate the judgment of indefiniteness
as to claims 15, 21–23, and 35, and remand with direction
that the district court vacate its own determination of
invalidity. We also remand with directions that the court
enter judgment of non-infringement as to those claims.
AFFIRMED-IN-PART, VACATED-IN-PART, AND
REMANDED
COSTS
Costs to Wright Medical.