This case involved two issues: (1) the correctness of the district court’s construction of the term “essentially midway” referring the location of a recess along a taper; and (2) the district court’s refusal to permit Howmedica to assert the doctrine of equivalents after receiving the claim construction.
The district court construed the term “essentially midway” to require that “the recess is essentially midway along the taper such that the effectiveness of each is not compromised.” Together with other construed the terms, the court’s constructions resulted in a requirement of the presence of a sleeve in between a shell and a bearing for the taper type of securement. Howmedica was unable to prove literal infringement under this construction. Following the court’s construction, the parties sought to have the court enter a final judgment, however, Howmedica added that it could still prove infringement under the doctrine of equivalents. Although the Local Rules permitted amendments to infringement contentions after the claims are construed (only upon leave of court), Howmedica had not sought to amend its infringement contentions, relying instead on broad language contained in its contentions stating that, if it cannot prove literal infringement as to any limitation, then it contends that that limitation is met under the doctrine of equivalents.
The Federal Circuit affirmed on both issues. As to the construction of “essentially midway,” the court discussed how claim terms are construed not only in the context of the claim, but also the written description and prosecution history. Here, the claim language itself failed to resolve the parties’ dispute as to the location of certain elements with respect to one another, and therefore the court held that resort to the written description is necessary, because a person of ordinary skill in the art would naturally look to the written description for a full understanding of the claims. The court made clear that resorting to the specification where the claim is unclear is not the same as importing a limitation into the claim from the specification. On the other hand, where the claims leave little doubt as to what is intended, reshaping the claims with material from the written description is clearly unwarranted.
As to the district court’s refusal to permit Howmedica from alleging infringement under the doctrine of equivalents, the court held that the application of local rules is a matter of discretion with the district court. Here, the district court did not abuse its discretion, because the local rules provided Howmedica with an opportunity to amend its infringement contentions after the claim construction order, but Howmedica did not do so. Its broad statement in its original infringement contentions regarding generally the alternative of doctrine of equivalents was insufficient to satisfy its burden of providing infringement contentions.
Howmedica Osteonics Corp. v. Zimmer, Inc., Case Nos. 2015-1232, -1234, -1239 (May 12, 2016); Opinion by: Hughes, joined by Moore and Taranto; Appealed From: United States District Court for the District of New Jersey, Wigenton, J. Read the full opinion here.