NOTE: This disposition is nonprecedential. 

United States Court of Appeals 

for the Federal Circuit 

__________________________ 

SMITH & NEPHEW, INC., 

Plaintiff-Appellee, 

v. 

ARTHREX, INC., 

Defendant-Appellant. 

__________________________ 

2010-1427 

__________________________ 

Appeal from the United States District Court for the 

Eastern District of Texas in case No. 07-CV-0335, Judge 

T. John Ward. 

___________________________ 

Decided: June 20, 2011 

___________________________ 

MARK G. MATUSCHAK, Wilmer, Cutler, Pickering, Hale 

and Dorr, LLP, of Boston, Massachusetts, argued for 

plaintiff-appellee. With him on the brief were JAMES M.

DOWD, of Los Angeles, California; and DAVID L.

CAVANAUGH, of Washington, DC. Of counsel was PAUL B.

KELLER, of New York, New York. 

ANTHONY P. CHO, Carlson, Gaskey & Olds. P.C., of 

Birmingham, Michigan, argued for the defendant-
SMITH & NEPHEW v. ARTHREX 2

appellant. Of counsel on the brief were STEVEN C. SUSSER 

and RODGER D. YOUNG, Young & Susser, P.C., of Southfield, Michigan; and ERIC M. ALBRITTON, Albritton Law, of 

Longview, Texas. Of counsel was DEBRA ROCHELLE 

COLEMAN, Albritton Law, of Longview, Texas. 

__________________________ 

Before RADER, Chief Judge, and PLAGER and MOORE, 

Circuit Judges. 

MOORE, Circuit Judge. 

Arthrex, Inc. (Arthrex) appeals the United States District Court for the Eastern District of Texas’s denial of its 

motions for Judgment as a Matter of Law (JMOL) after a 

jury found Arthrex liable for direct and indirect infringement for the sale of its RetroButton® device. Because 

Smith and Nephew, Inc. (S&N) presented insufficient 

evidence at trial to support a finding that the RetroButton® device infringed Claim 8 of U.S. Patent No. 

5,645,588 (’588 patent), we reverse. 

BACKGROUND

On August 7, 2007, S&N filed a complaint in the 

Eastern District of Texas against Arthrex alleging infringement of Claim 8 of the ’588 patent based on Arthrex’s sale of the RetroButton® device. The ’588 patent 

describes and claims a surgical device used in reconstructive surgery of the anterior cruciate ligament (ACL). 

Claim 8 reads as follows: 

A graft attachment device for attaching an anterior cruciate ligament graft to a bone wherein a 

passage is drilled through the bone for attachment 

thereto, comprising: 
3 SMITH & NEPHEW v. ARTHREX

a graft connection element comprising a sling 

member having a width sufficient to carry 

the graft during and after implantation; 

an elongated body sized to pass through the 

passage in the bone and having an upper 

surface, a lower surface, a leading end, 

and a trailing end, each said end having a 

hole defined by said elongated body configured to carry a filament, a portion of 

said body disposed between said hole in 

said leading end and said hole in said 

trailing end being configured for attaching 

to said body the graft connection element 

and enabling said body to rotate relative 

to the graft from an initial insertion position, along an axis substantially parallel 

to the graft, to a final fixation position 

transverse to the graft to secure the graft 

relative to the bone; and 

filament threaded through said hole in said 

leading end and said hole in said trailing 

end. 

The district court issued a claim construction order on 

November 20, 2009. J.A. 1-47. The district court construed the term “graft connection element” to mean 

“material that supports the graft that is located between 

the hole in the leading end and the hole in the trailing 

end and is distinct from the material located in said 

holes.” J.A. 17. Further, the district court determined 

that the “graft connection element includes at least a 

sling member.” J.A. 20. The district court construed the 

term “sling member” as a “loop of material that supports 

the graft.” J.A. 20. 
SMITH & NEPHEW v. ARTHREX 4

Following claim construction, Arthrex filed a motion 

for summary judgment of no infringement. Arthrex’s 

motion for summary judgment focused on two arguments. 

First, Arthrex argued that its RetroButton® device did 

not contain a “trailing filament” as required by Claim 8. 

J.A. 57. Second, Arthrex argued that the RetroButton® 

did not contain holes in either the “trailing end” or the 

“leading end” as required by Claim 8. J.A. 58. 

The district court granted Arthrex’s motion for summary judgment regarding literal infringement. The 

district court determined “that as a matter of law the 

accused device has no hole in the ‘leading end’ or ‘trailing 

end’ and has no ‘filament’ threaded through a hole in the 

‘leading end’ or ‘trailing end.’” J.A. 63. The district court, 

however, determined that there were genuine issues of 

material fact regarding infringement under the doctrine 

of equivalents, including: 1) whether the RetroButton® 

device’s loop is equivalent to the claimed trailing filament; 

and 2) whether the device’s tear drop-shaped holes are the 

equivalent of the claimed holes in the trailing end and the 

leading end. J.A. 64. Further, the district court determined that neither prosecution history estoppel nor the 

all-elements rule precluded S&N’s arguments regarding 

infringement under the doctrine of equivalents. J.A. 64. 

Following a five-day trial, the jury returned a verdict 

finding that the RetroButton® device directly infringed 

Claim 8 of the ’588 patent and that Arthrex induced 

infringement of Claim 8. The jury awarded $4,713,000 in 

damages. 

After trial, Arthrex filed renewed JMOL motions for 

noninfringement, invalidity, and damages. On June 15, 

2010, the district court denied the motions and granted 

S&N’s motion for a permanent injunction. The district 

court later stayed the permanent injunction pending 
5 SMITH & NEPHEW v. ARTHREX

appeal, J.A. 99, finding that “the facts and legal issues of 

this case are particularly close on the issue of infringement.” J.A. 97. Arthrex appeals and we have jurisdiction 

pursuant to 28 U.S.C. § 1295. 

DISCUSSION

Because the denial of a motion for judgment as a matter of law is a procedural issue not unique to patent law, 

we review it under the law of the regional circuit. Summit Tech., Inc. v. Nidek Co., 363 F.3d 1219, 1223 (Fed. 

Cir. 2004). The Fifth Circuit reviews the denial of JMOL 

de novo. Med. Care Am., Inc., v. Nat’l Union Fire Ins. Co., 

341 F.3d 415, 420 (5th Cir. 2003). “JMOL is appropriate 

when ‘a party has been fully heard with respect to an 

issue and there is no legally sufficient evidentiary basis 

for a reasonable jury to have found for the party with 

respect to that issue.’” Id. (quoting Fed. R. Civ. P. 

50(a)(1)). S&N, as the plaintiff, bears the burden of proof 

to show the presence of every element or its equivalent in 

the RetroButton® device. See, e.g., Uniloc USA v. Microsoft Corp., 632 F.3d 1292, 1301 (Fed. Cir. 2011). Infringement is a question of fact that we review for 

substantial evidence. Id. 

Arthrex argues that it is entitled to JMOL because 

S&N failed to offer any evidence at trial that the RetroButton® contains “a graft connection element comprising 

a sling member.” Arthrex argues that S&N failed to show 

that a “sling member” is a part of the “graft connection 

element” but instead attempted to prove the opposite – 

that the “graft connect element” is a part of the “sling 

member.” 

S&N contends that “Arthrex’s argument is a distinction without a difference.” Appellant’s Br. 41. S&N 

argues that we should affirm the district court’s denial of 

JMOL because it presented sufficient evidence at trial for 
SMITH & NEPHEW v. ARTHREX 6

the jury to find that the RetroButton® has both a “sling 

member” and a “graft connection element” as defined by 

the district court. Dr. Sebastianelli’s (S&N’s expert 

witness) cross-sectional schematic of the RetroButton® 

device best illustrates S&N’s infringement contentions 

regarding these key limitations: 

J.A. 2778. As shown in the schematic, S&N contends that 

the entire loop of material that supports the graft is the 

claimed “sling member” and that the three strands of 

material at the bottom portion of the loop are the claimed 

“graft connection element” (abbreviated as GCE). Under 

S&N’s theory, the “graft connection element” is a portion 

of the “sling member,” but the “graft connection element” 

does not include the entire “sling member” structure. 

We agree with Arthrex. S&N’s theory of infringement 

is inconsistent with the plain language of Claim 8. As the 

district court correctly noted in its claim construction 
7 SMITH & NEPHEW v. ARTHREX

order, “Claim 8 of the ’588 patent states, in relevant part, 

‘a graft connection element comprising a sling member . . 

.’ Thus, the graft connection element includes at least a 

sling member.” J.A. 20. Given the district court’s construction of “sling member” (which neither party appeals), 

the “graft connection element” must include a “loop of 

material that supports the graft.” J.A. 20. If the RetroButton® device’s graft connection element is limited to 

the three strands of material between the holes (as S&N 

contends), then it does not include “a loop of material.” 

S&N failed to present any evidence that the RetroButton® device contained the claimed “graft connection 

element comprising a sling member [a loop of material].” 

Additionally, S&N offered no evidence that the “graft 

connection element” included the equivalent of a “sling 

member.” See Appellee’s Br. 23 (“[T]he only claim requirements that were proven equivalently were the 

location of the holes and the district court’s requirement 

that the ‘trailing filament’ be ‘distinct’ from the material 

used to support the graft.”); see also Oral Argument 

19:22-19:53. 

Claim 8 further requires “a portion of said body . . . 

being configured for attaching to said body the graft 

element connection.” ’588 patent col.7 ll.13-17. The 

specification of the ’588 patent teaches that the “graft 

connection element” attaches directly to this portion of the 

body. See, e.g., ’588 patent col.2 ll.1-4 (“The body further 

defines at least one means for attaching to the body . . . a 

graft connection element which is in turn connected to the 

graft.”). The preamble of the ’588 patent recognizes this 

relationship: “[t]he body further defines at least one 

element for attaching to the body either a graft or a graft 

connection element which is in turn connected to the 

graft.” The embodiments of the invention described in the 

’588 patent indicate that the “graft connection element” is 
SMITH & NEPHEW v. ARTHREX 8

directly attached to the “portion of said body” between the 

holes in the leading and trailing ends. See, e.g., id. col.6 

ll.13-17. Under the district court’s construction (which 

neither party appeals) the “graft connection element” 

must be located “between the hole in the leading end and 

the hole in the trailing end” and it must be “distinct from 

the material located in said holes.” J.A. 17. In other 

words, it must attach to “a portion of said body disposed 

between said hole in said leading end and said hole in 

said trailing end.” 

As illustrated in Dr. Sebastianelli’s cross-sectional 

schematic above, the RetroButton® device’s alleged “graft 

connection element” does not attach to any portion of the 

device’s body. Even if Claim 8 is broad enough to allow 

for indirect attachment, under S&N’s theory of infringement the “graft connection element” does not attach to the 

portion of the body between the holes in the trailing and 

leading ends as the claim requires. S&N’s contention that 

the graft connection element of Claim 8 is satisfied by the 

three strands on the bottom portion of the sling is inconsistent with the plain language of the claim itself. Claim 

8 expressly requires that the graft connection element 

include the loop of material (the sling) and that it attach 

to the portion of the body between the holes. The accused 

portion of the RetroButton® device (the three strands of 

material at the bottom of the sling) does not meet either 

of these requirements. Therefore, Arthrex has failed to 

offer substantial evidence to support its accusation that 

the RetroButton® device infringes Claim 8. Because 

there is no evidence of record supporting the jury’s verdict 

that the RetroButton® infringes the ’588 patent, JMOL is 

appropriate, and we must reverse. In light of this holding, we need not address Arthrex’s other arguments on 

appeal. 

REVERSED