## United States Court of Appeals for the Federal Circuit

05-1311, -1335
DEPUY SPINE, INC. (formerly known as Depuy Acromed, Inc.) and BIEDERMANN MOTECH GMBH, Plaintiffs-Appellants,

v.
MEDTRONIC SOFAMOR DANEK, INC. (formerly known as Sofa mor Danek Group, Inc.) and MEDTRONIC SOFAMOR DANEK USA, INC., Defendants-Cross Appellants.

Kenneth R. Adamo , Jones Day, of Dallas, Texas, argued for plaintiffs-appellants. With him on the brief were Calvin P. Griffith , Robert C. Kahrl , and Patrick J. Norton , of Cleveland, Ohio; Gregory A. Castanias , of Washington, DC; and Brian J. Murray , of Chicago, Illinois. Dirk D. Thomas , Robins, Kaplan, Miller & Cires i L.L.P, of Washington, DC, argued for defendants-cross appellants. With him on the brief were Robert A. Auchter and André J. Bahou ; and David E. Marder , of Boston, Massachusetts. Appealed from: United States District C ourt for the District of Massachusetts Senior Judge Edward F. Harrington

## United States Court of Appeals for the Federal Circuit

05-1311, -1335
DEPUY SPINE, INC. (formerly kn own as Depuy Acromed, Inc.) and BIEDERMANN MOTECH GMBH, Plaintiffs-Appellants,

v.
MEDTRONIC SOFAMOR DANEK, INC. (formerly known as Sofa mor Danek Group, Inc.) and MEDTRONIC SOFAMOR DANEK USA, INC., Defendants-Cross Appellants.

__________________________ DECIDED: November 20, 2006

__________________________ Before NEWMAN, LINN, and PROST, Circuit Judges

. LINN, Circuit Judge

. DePuy Spine, Inc. (formerly DePuy AcroMed, Inc.) and Biedermann Motech GmbH (collectively “DePuy”) appeal from grant s of summary judgment that the Vertex® and bottom-loaded types of devices marketed by Medtronic Sofamor Danek, Inc. and Medtronic Sofamor Danek USA, Inc. (colle ctively “Medtronic”) do not infringe U.S. Patent No. 5,207,678 (’678 patent). DePuy Acromed, Inc. v. Medtronic Sofamor Danek, Inc. , No. 01-10165-EFH (D. Mass. Apr. 14, 2003) (“ All Models Order ”); DePuy Acromed, Inc. v. Medtronic Sofamor Danek, Inc. , No. 01-10165-EFH (D. Ma ss. Feb. 24, 2004) (“ Vertex Order ”). Medtronic cross-appeal s from the denial of its motion for judgment asa matter of law (JMOL) and the final judgment entered after a jury verdict finding that Medtronic’s MAS poly axial pedicle screws in fringe the ’678 patent by equiv a lents and awarding lost profit damages. DePuy Acr o med, Inc. v. M edtronic Sofamor Danek, Inc. , No. 01-10165-EFH (D. Mass. Feb. 10, 2005) . We conc lude that the district c ourt erred in granting summary judgment of non-infringement on the Ve rtex® model. We als o conclude that district cour t’s judgment of non-infringeme nt for the bottom-loaded screw devices was proper and that it correctly determined that Me dtronic was not entitled t o judgment as a matter of law on the issues of non-infringement or lost profit damages for the MAS polyaxial pedicle screws and correctly entered judgment of infring e ment as to the MAS device. Thus, we affirm-in -part, reverse-in-part, and remand. BACKGROUND DePuy Spine and Biedermann Motech ar e the exclus ive licensee and assignee, respectively, of the ’678 patent. The ’678 pat ent involves pedicle screws and receiver members used in spinal surgeries. Pedi cle screws are implanted into th e vertebrae during surgery. The head of eac h pedicle s c rew is connected to a receiver portion, and a threaded rod connects the receiver portions of several screws. Together, the screws, receiver portions, and rods are used to st abilize spinal c o lumn segments. In the prior art, it w a s difficult for su rgeons to rigidly install the screws int o adjacent vertebrae in the exac t positions needed to properly align the receiver portions to receive the threaded rod. T o overcom e this problem, improved structures were developed that used a s pheric al screw head an d a hal ved receiver portion with a spherical c a vity. This allowed pivoted move ment of the receiver portion much like a

05-1311, -1335 2ball-and-socket joint, but requi red precise machining of matc hing spherical portions of different sizes and therefore resu lted in high s t ocking costs. The ’678 patent attempts to reduce sto cking costs for pedicle screws by us ing a uniform receiver portion that can be placed on di fferent sizes of spherical heads. Claim 1 is representative of all claims on appeal: 1. Device for stabilizing spina l co lumn se gments, comprising a pedic l e screw (1) having a threaded s haft por tion (3) and a spherically-shaped head (4) at the end of said threaded sha ft portion, a receiver member (5) flexibly connected to said head (4), said receiver member being provided with two holes for receiving a rod 916) [sic:(16)], a receiver chamber (7) being prov ided within said receiv er mem ber (5), the receiver chamber (7) having at one end thereof a bore (8) for passing the threaded shaft portion (3) therethrough and an inner hollow spherically-shaped portion (9) for receiving the head (4) of said screw (1), an opening (10) being provided opposite s a id bore (8) for inserting said screw (1), said device further comprising a compression member (18) for exerting a force onto said head (4) such that said head is pressed against the hollow spherically

shaped por tion (9). ’678 patent, col. 4, ll. 9-24 (emphasis added). The highlighted limitations are at issue on appeal and are termed, respectively, as t he “bore,” “spherically -shaped,” “opening,” “compression member,” and “press ed against” limitations . The invention is illustrated in figures 1 through 3 of the ’678 pat ent, which are reproduced below:

05-1311, -1335 3On January 26, 2001, DePuy filed suit aga inst Medtronic asserting infringe ment of the ’678 patent bas ed on Medtronic’s MA S, Vertex®, M8, M 10, and Sextant models of polyaxial pedicle screws. The MAS and Vertex® m odels are assembled by placing the screw t h rough a top opening in the receiver member and then securing the top with a crown. In the Vertex® mode l, the interior portion of the receiver member adjacent to the screw head is of an approxim ately conical shape; the sa me area in the MAS model is shaped like a portion of a toroid. The receiver portions for the MAS and Verte x ® models are depicted below, with arrows indica ting the relevan t conical and toroidal portions.

05-1311, -1335 4MAS Model Vertex® M odel The M8, M10, and Sextant m odels (“the bottom-loaded screw models”) are assembled by first inserting the c r own and s c rew head into the bot tom of the receiver member and then inserting a “snap ring.” The snap ring in the bottom-loaded s c rew models retains the screw head in a manner simila r to how the conical or toroidal areas in the MAS and Vertex® m odels retain the screw head. In the bottom-loaded s c rew models, the screw head is too large to pass through the opening at the top of the re ceiver member. Medtronic filed three motions seeking s u mmary judgment of non-infringement in January 2003. The first motion asserted t hat all models lac k ed the “compression member” limitation, and the sec ond motion a sserted that the Ver t ex® and MAS models lacked the “spherically-shaped” limitati on. Both motions were denied. All Models Order , slip op. at 1. The third motion a sserted that the bottom-loaded screw models did not posses s either the “bore” or “opening” limitations. The di strict court granted the third motion, concluding that the bottom-loaded scr ew models lacked the “bore” limitation literally and that t he doctrine of equivalents could not be applied without vitiating that limitation. Id. , slip op. at 2-3. The court then conducted a hearing on claim construction and construed two terms at issue in this appeal. The court’s construction of those terms is contained in a

05-1311, -1335 5Memorandum Opinion and Orde r dated October 27, 2003. DePuy Acrom ed, Inc. v. Medtronic Sofamor Danek, Inc. , No. 01-10165-EFH (D. Mass. Oct. 27, 2003) (“ Cla im Construction Order ”). The court construed the “spheric ally-shaped” limitation to mean “approximately spherical, such as a globe or basketball.” Id. , slip op. at 17. The cour t also construed the “compression member” lim itation and held that it was not a meansplus-function claim limitation; instead, it construed that limita tion “to require an intermediate piece (or member) that appl ies compression force to the head of the screw.” Id. Based on the court’s construction of the “spherically-shaped” limit ation, Medtronic filed a motion for summary judgm ent of non-infringement for the Vertex ® model. Vertex Order , slip op. at 1. The court conc luded that the Vert ex® m o del did not literally infringe the ’678 patent because the inner hollow space of the receiver member had a conical shape that was not approximately spher ical. Id. , slip op. at 2. The cour t also concluded that the Vertex® model did not infringe under the doctrine of equivalents

. Id. , slip op. at 3. Citing Tronzo v. Biomet, Inc. , 156 F.3d 1154 (Fed. Cir. 1998), the court held that under t he “all elements” rule, it could not find a conical sha p e to be equivalent to a spherical shape without reading the limitation ou t of the claim. Id. , slip op. at 4. The court al so found that the Vert ex® model did not do “substantially the same thing” as the device in the ’678 pa tent because t he screw head contac ts an edge of the recei v er member rather than a larger area. Id. , slip op. at 5. The case proceeded to a jury trial on the MAS model. The jury verdict found that the MAS m odel infringed the ’ 678 patent under the doctrine of equivalents and awarde d lost profits and reasonable ro yalty damages. Medtronic mov ed for judgment as a matter

05-1311, -1335 6of law that the MAS model did not infringe under the doctrine of equivalents and that DePuy was not entitled to lost profit damages; both motions were denied. On appeal, DePuy challenges the court’s fi nding that no issue of material fact exists as to whether the bottom-loaded sc rew and Vertex® models infringe the ’678 patent and the court’s appl ication of the “all el ements” rule. On cross-appeal, Medtronic challenges the court’s construction of th e “compression mem ber” limitation and the court’s denial of its motions for JMOL . We have jurisdic tion under 28 U.S.C. § 1295(a)(1). DISCUSSI ON I. Standard of Review This court reviews a district court’ s grant of summary judgment of noninfringement de novo

. Hilgraev e Corp. v. McAfee As socs., Inc. , 224 F.3d 1349, 13 52 (Fed. Cir. 2000). Summary judgment is proper only if there are no ge nuine issues o f material fact and the movant is entitl ed to judgment as a matter of law. See F e d. R. Civ. P. 56(c); Anderson v. Liberty Lobby, Inc. , 477 U.S. 242, 250 (1986). Claim construction is an issue of law, see Markman v. Westview Instru ments, Inc. , 52 F.3d 967, 970-71 (Fed. Cir. 1995) ( en banc ), aff’d , 517 U.S. 370 (1996), that we review de novo

. See Phillips v. AWH Corp

. , 415 F.3d 1303, 1328 (Fed. Cir. 2005) ( en banc ); Cybor Corp. v. FAS Techs., Inc. , 138 F.3d 1448, 1456 (Fed. Cir. 1998) ( en banc ). Infringement, whether lit eral or under the doctrine of equi valents, is a question of fact. Ferguson Beauregard v. Mega Sys., Inc. , 350 F.3d 1327, 1338 (Fed. Cir. 2003). The determination of infringement under the doc trine of equivalents is limited by two primary legal doctrines, pros ecution history estoppel and t he “all elements” rule, the

05-1311, -1335 7applications of which ar e questions of law. Seachan g e Int’l, Inc. v. C-COR, Inc. , 413 F.3d 1361, 1378 (Fed. Cir. 2005). “We review the district court’s denial of a motion for JMOL without deference, apply i ng the same st andard em ployed by the district court.” Honeywell, I n t’l Inc. v. Hamilton Sundstrand Corp. , 370 F.3d 1131, 1139 (Fed. Cir. 2004) ( en banc ). Federal Rule of Civ il Procedure 50(a)(1 ) provides that a court may grant a motion for JMOL only where “there is no legally sufficient evidentiary basis for a reasonable jury to find for [the non-movant].” Fed. R. Civ. P. 50(a)(1). “Whether lost profits ar e legally compensable in a particular situation is a question of law that we review de novo .” Poly-America, L.P. v

. GSE Lining Tech., Inc. , 383 F.3d 1303, 1311 (Fed. Cir. 2004). Interpretati on of contract terms i s a ma tter not unique to our ex clusive jurisdiction and is ther efore reviewed under regional c i rcuit law. See Sun Studs, Inc. v. App lie d Theory As socs., Inc. , 772 F.2d 1557, 1561 (Fed. Cir . 1985). The First Circuit treats interpretation of contract terms as a legal question reviewed de novo , unless there is such ambiguity in the language as to create a question of fact. Liberty Mut. Ins. Co. v

. Greenwich Ins. Co. , 417 F.3d 193, 196-97 ( 1 st Cir. 20 05). Whether ambiguity exists is considered a question of law. Id. II. Vertex® Model DePuy argues that the district court improperly granted summary judgment of non-infringement on the Vertex® model bec ause a genuine issue of mate rial fact exists on both literal infringement and infringement under the doctrin e of equivale nts. Wit h

05-1311, -1335 8respect to the doctrine of equiv a lents, DePu y argues that the court erred in applying both the “all elements” rule and t he function-way-result test. Medtronic counters that the receiver member of the Vertex® device has a conically-s haped hollow portion, rather than a spheric ally-shaped portion, and therefore does not literally infringe. Medtronic also c ounters that the court properly applied the relevant law in examining infringement by equivalents. Altern atively, Medtronic counters that even if a “spherically-shaped” equiva lent is present in the Vertex® model, the Vertex® model does not meet the “pressed against” lim itation becaus e the screw head rests against an edge of the equiv a lent and n o t against the actual sphericallyshaped po rtion equiv a lent. We will b egin our analy s is with Medtronic’s alternative argument. A. “Spherically-Shaped” and “Pressed Against” Claim 1 recites that the screw “ head is pressed against the hollow spher ic allyshaped portion.” The court construed “spher ically-shaped” to mean “approximately spherical, s u ch as a globe or a basketball.” T he parties do not dispute this c onstruction on appeal. The parties dispute, however, whether the “pressed against” limitation requires that the screw head engage the entire spherically-shaped portion or whether it is enough that the head engage just the “edge” of the spherically-shaped portion. In determining the meaning of the disputed claim limitation, we look principally to the intrinsic evidenc e of record, examini ng the claim language itself, the written description, and the prosecution history, if i n evidence. See Phillips , 415 F.3d at 1312- 17. First, the claim language do es not indicate that “hollo w spherically-shaped portion” must be limited so as not to include the edge of that portion, nor does it indicate how

05-1311, -1335 9much of the hollow spherically-shaped porti on must be “pressed against” the scre w head. Claim 4, whic h depends from claim 1, requires that “the radii of the hollow spherically-shaped portions (9, 19) and of t he spheric a lly-shaped screw head (4) [be] substantially equal.” ’678 patent, col. 4, ll. 37 -40. That implies that independent claim 1 must be broad enough to read on a device wit h components of unequal radii that nonetheles s are pres sed agains t each other. If the screw head has a s m aller radius than the hollow spherically-s haped portion, the only part of the spherically-shaped portion against which t he screw head would be pressed would be t he edge of the hollow spherically-shaped por tion. Second, the specification does not indic a te that the “hollow spherically-shaped portion” must be limit ed to exc l ude the edge of that portion or t hat “pressed against” requires a certain am ount of contact between the spheric ally-shaped portion and the screw head. In the absence of a stated reason to e xclude the edge, it wou l d ordinarily and customarily be understood t hat the referenced portion inc l udes any and all parts of the structure. Similarly, in the absence of a st ated reason to require a certain amount of contact, it would ordinarily and customarily be underst ood that the referenced portion is pressed against a scr ew h ead when any amount of that portion presses against th e screw head. Figures 1 and 2 of the ’678 pa tent depict hollow spherically-shaped portion 9 in crosshatching that appears to include t he edge of the portion. The corresponding description of that portion does not exc l ude the edge, noting that “[a] porti on 9 in the form of a hollow spherical segment is provi ded in t he interior i mmediately adjacent to the bore.” ’678 patent, col. 2, ll. 21-23. That description indic a tes that the relev ant portion extends all the way to the bore, whic h neces sarily implies that it includes the

05-1311, -1335 10edge. Further, the description does not indicate how much of the spheric a lly-shaped portion presses against the screw head; rather, it notes only that there is “contact” between the components. Id. , col. 2, ll. 33-34. The pros ecution history provides no further guidance. For the foregoing reasons, we find Medt ronic’s argument unpersuasive, and we conclude that “hollow spheric ally -shaped portion” inclu des t he edge of that portion and that the screw head is “pressed against” the “ hollow spherically-shap ed portion” if it presses against all or any part of that portion—including the edge. B. Conical Walls The district court found that there was not a gen uine issue of material fact as to literal infringement because the shape of t he inner hollow space in the Vertex® model is conical, wit h “angul ar rather than spherical” walls. Vertex Order , slip op. at 2-3. The court also found that even if a portion of t he shape is s pherical, that spherically-shaped portion does not contact the head of the screw. Id. , slip op. at 3. On appeal, DePuy points to two compar isons as evincing a question of fact regarding a spherically-shaped por tion in the Vertex® model. First, DePuy points to pictures of a basketball and a selected portion of the basket ball, which DePuy submitted as exhibits before the district court. DePuy argues that the picture of the selected portion demonstrates that a thin slice of a s phere creat es a pr ofile that appears conica l. Depictions of those exhibi ts are shown below:

05-1311, -1335 11Second, DePuy point s to a c o mparison of a cro ss section of the Vertex® model and Figure 3 of the ’678 patent. That comparison is show n in the follo win g fig u res, with arrows added to indicate the relev ant conical and spherical walls:

Spherical w a ll Conical w a ll Vertex® M odel Figure 3 of the ’678 Patent DePuy argues that, like the selected portion of the basket ball, the Verte x ® model could be viewed as possessing a spher ically-shaped portion that appears conical in profile. Although these comparisons do highlight that at varyin g degrees of magnification or abstraction a curved surface can appear angular, they do not c r eate a genuine issue of material fact as to whether t he Vert ex® model possesses the “spheric ally-shaped ” limitation. DePuy points to no evidenc e that specifically identifies a region in the

05-1311, -1335 12Vertex® model as “spherical .” Indeed, DePuy ’ s expert acknowledged that the engineering drawing of the Vertex® model shows a “ c onically-s haped” hollow portion, and that a photomicrograph of the Vertex® receiver shows a ledge—not a sphere— even if it contains some roundi ng at the edges. At best, these declarations identify a conical or ledge structur e; they do not cons titute evidence of a portion that meets the literal terms “approximately spherical, suc h as a globe or a basketball.” Therefore, the district court did not er r in c onc luding that there was no genuine is sue of material fact a s to literal infringement. C. Doctrine of Equivalents The district court determined that it “cannot f i nd that the cylindrical- c onical sha p e of [the Vertex® model’s] receiv er member is equivalent to the spherically-shape d portion dis c losed in the ’678 patent.” Vertex Order , slip op. at 4. The court first applied the “all elements” rule and concluded that, as in Tronz o , treating a conical s hape as the equivalent of a spherical s hape would vitiat e the “spheric ally-shaped” limitation. Id. The court also applied the function-way-result test and determined that, because t he scre w head in the Vertex® model “is merely pre ssed against an edge or lip on the receiver member,” the Vertex® model does not do “substantially the same thing” as the device in the ’678 patent. Id. , slip op. at 5. Under the doctrine of equivalent s, “a produ ct or process that does not literally infringe upon the expr ess te rms of a patent claim may nonetheless be found to infringe if there is ‘equivalenc e’ bet ween the elements of the accused pr oduct or process and the claimed elements of the patented invention.” Warner-Jenkinson Co. v. Hilton Dav i s

05-1311, -1335 13Chem. Co. , 520 U.S. 17, 21 (1997) (citing Graver Tank & Mfg. Co. v. Linde Air Prods

. Co. , 339 U.S. 605, 609 (1950)). The doctrine recognizes that [t]he language in the patent claims ma y not capture every nuance of the invention or describe with co mplete precision the ran ge of its novelty. If patents were always interpreted by t heir literal terms, t heir value would be greatly diminished. Unim portant and insubstantial substitutes for certain elements could defeat the patent, and its value to inventors could be destroyed by simple acts of copying. Festo Cor p . v. Shok etsu Ki nzoku Kogyo Kabushiki Co. , 535 U.S. 722, 731 (2002); Graver Tank , 339 U.S. at 605 (“[T]o permit imitation of a patented invention which doe s not copy every literal detail would be to convert the prot ection of the patent grant into a hollow and useless thing.”). One limit on the doctrine of equivalents is the “all elements” rule. The “all elements” rule attempts to balanc e the doctr ine of equiv a lents with the basic patent law principle that claim language de fines the s c ope of an invent ion and every limitation is material. Each elem ent contained in a pat ent cl aim is deemed material to defining the scope of the patented in vention, and thus the doct r ine of equivalents must be applied to individua l elements of the claim, not t o the invention as a whole. It is important to ensure that the applic ation of the doctrine, even as to an individual element, is not allo wed s u ch broad play as to effectively eliminate that element in its entirety. Warner-Jenkinson , 520 U.S. at 29. Thus, as a prac tical matter, the “all elements” rule informs a doctrine of equivalents analys is by requiring that equivalence be as sessed on a limitation-by-limitati on basis, rather than from the pers pective of the invention as a whole, and that no limitat ion be read completely out of the claim. Freedman Seating Co. v. Am. Seating Co. , 420 F.3d 1350, 1358 (Fed. Cir. 2005).

05-1311, -1335 14In Warner-Jenkinson , the Supreme Court provi ded guidance for determining when resort to the doctrine of equivalents is prec luded as a matter of law. First, the Court noted that “[w]here the ev idence is s u ch that no reas onable jury could determin e two elements to be equivalent, district cour ts are obliged to gra n t partial or complete summary judgment.” Warner-Jenkinson , 520 U.S. at 39 n.8 (cit ing Fed. R. Civ. P. 56; Celote x Co rp. v. Catrett , 477 U. S. 317, 322-23 (1986)). Second, the Court noted that “under the particular facts of a case, .

. . if a theory of equivalenc e w ould entirely vitiate a particular claim element, parti al or comp lete judgment should be rendered by the court.” Id. at 39 n.8. Informed by this guidance, we have held that in certain ins t ances, the “all elements” rule forecloses resort to the doc trine of equiv a lents bec ause, on the facts or theories presented in a case, a limitation w ould be read complet e ly out of the claim— i.e. , the limitation would be effect ively removed or “vitiated. ” For instance, we have concluded that in some cases, the eviden ce was s u ch that no reasonable jury could determine a proffered equivalent to be ins ubstantially different from the claimed limitation. See, e.g. , Freedman Seating , 420 F.3d at 1361 (holdi n g that a limitation was vitiated in part because the stru ctural difference in the accused device “is not a ‘subtle difference in degree,’ but rather ‘a c l ear, s ubs tantial difference or difference in kin d ’” (internal citation omitted)); Ethic o n , 149 F.3d 1309, 1319 (Fed. Cir . 1998) (holding that the “all elements” rule barred application of the doctrine of equivalents because, on the facts presented, no reasonable jury could find the differences to be insubstantial). We have also concluded that in some cases, the patentee’s theory of equivalence was legally ins u fficient because, rather t han demonstrate an insubstantial difference

05-1311, -1335 15between a limitation and an elem ent in the accused device, the theory effectively elimin ated a limitation in its entir ety. See, e.g. , Tronzo , 156 F.3d at 1160 ( holding that the patentee’s theory of equivalence—that “ any shape would be equiv a lent to the conical limitation”—would write such a limi tation out of the claims (emphasis in origina l )); Forest Labs., Inc. v. Abbot Labs. , 239 F.3d 1305, 1313 (Fed. Cir. 2001) (holding that the patentee’s t heory of equiv a lence—that a lim itation on the percentages of water in a composition was “irr elevant ” when compar ed to the accused composition— vitiated such a limitation). Thus, the “a ll elements” rule gener ally is not met—and therefore a claim limitation can be said to be v i tiated—if the theory or evidence of equivalenc e is legally incapable of est ablishing that the differences between the limitation in the claim and the a ccused device are insubstantial; i.e. , if the theory or evidenc e is so legally insufficient as to warrant a holding of n on-infringement as a
matter o f law. Warner-Jenkins o n , 520 U.S. at 39 n.8; Metro. R.R. Co. v. Moore , 121 U.S. 558, 569 (1887) (“Strictly speak ing, evidence is said to be ins u fficient in law only in those cases where there is a total absenc e of such proof, either as to its quantity or kind, as in the particular cas e some ru le of law requires as essential to the establishm ent of the fact.”); see also Sage Prods., Inc. v. Devon Indus., Inc. , 126 F.3d 1420, 1425-26, 1429-30 (Fed. Cir. 1997). Our decision in Sage Produc ts , decided shortly after Warner-Jenkinson , illustrates the genesis of such an analys is. For one inv ention in that case, we held that resort to the doctrine of equivalents was foreclosed because no reasonable jury could find that the differences in the accu sed device were insubstantial. Sage Products , 126 F.3d at 1423-26. In consider ing equivalence, we noted the s i mplic ity of the structure,

05-1311, -1335 16the specificity and narrowness of the claim, and the foreseeabilit y of variations at the time the claim was filed. Id. at 1425 (“No subtlety of l anguage or complexity of the technology, nor any s u bsequent c hange in the stat e of the art, such as later-develop ed technology, obfuscated the significanc e of this limitation at the time of its incorporation.”). Because unde r these particular facts, no reasonable jury could find that the differences in the accused dev ice were insu bstantial, we conc luded that a finding of infringement by equiv a lents would e ffectively remove the relevant limitations from the claim and affirmed t he district court’s summary j udgment of non-inf r ingement. Id. at 1425-26. For a second invention at issue in Sage Products , we held that the doctrine of equivalents was foreclosed because the patentee’s theory of infringement was improper. Id. at 1429-30. In considering equiv a lence for a means-plus-function limitation, we noted t hat the claimed function include d the abilit y to control access b y moving bet ween open and closed positions. Id. at 1428-29. The accused pr oduct used a permanently locking lid that could not move back to an open position. Id. at 1427. We noted that the patentee’s theory of equiva lence—t hat a permanently loc k ing lid is equivalent to an openable lid— w as unsus tainable in that it did not offer a “function equivalent to that expressly reci ted in the claimed elem ent.” Id. at 1429. Because that theory could not support a conclusion of equi valence regardless of the evi dence, we concluded that the t heory was legally ins u fficient, declin ed to apply the doctrine of equivalents , and affirmed the court’s summ ary judgment of n on-infringement. Id. at 1429-30.

05-1311, -1335 17It is important to note that when we hav e held that the doctrine of equivalents cannot be applied to an accused device because it “vitiates” a claim limitation, it was not to hold that the doctrine is always forecl osed whenever a claim limitation does not literally read on an element of an accused dev ice; such an interpretation of the “all elements” rule would sw allow t he doctrine of eq uiv a lents entirely. See Ethicon , 149 F.3d at 1316-17 (holding that a similar int e rpre tation “would force the All Elements rule to swallow the doctrine of equiva lents, reducing the applicati on of the doctrine to nothin g more than a repeated analysis of literal infringement” (footno te omitted)). “[A]ny analys is of infringement under the doctrine of equivalents necess a rily deals with subjec t matter that is ‘beyond,’ ‘ignored’ by, and not included in the literal s c ope of a c l aim.” Id. at 1317 (emphasis in original). A holding that the doctrine of equivalents cannot be applied to an accus e d dev ice becaus e it “vitiates” a c l aim limit ation is nothing more th an a conclus i on that the evidenc e is such that no reasonable jury could conc lude that an element of an accused devic e is equivalent to an elem ent called f o r in the c l aim, or that the theory of equivalence to support the conclusion of in fringement otherwis e lacks legal sufficiency. Here, in applying the “all elements” rule , the district court relied solely on Tr onzo and conc luded that “the cylindric al-conical s hape of the [Verte x® model] can n ot infringe the ’678 patent without reading out of the claim the express requirement that the screw head be ‘pressed against the hollow, spher ical ly-shaped portion.’” Vertex Order , slip op. at 4 (emphasis added). Th e court als o noted that “permitting the cylindrical-conic al shape of t he [Vertex® model] to be consi dered equivalent to the spher ical s h ape required by the ’678 patent vitiates the ’678 patent requirement that the spherically05-1311, -1335 18shaped head .

. . be pressed against an inner , hollow, spherically-shaped portion of the receiver member.” Id. , slip op. at 4 n.3 (emphasis added ). T he district court also determined that this conclus i on was supported by the functi on-way-result test becaus e the conically-shaped portion of the Vert ex® model and the “spherically-shaped” limitation of the claim do not “do ‘s ubstantially the same thing.’” Id. , slip op. at 5. We find no support in the present case for the district court’s conclus i on that apply i ng the doctrine of equiv a le nts would vitiate or r ead ou t the “spherically-shaped” limitation. Our decisio n in Tronzo is factually distinguishable. 1 I n Tronzo , the invention related to artificial hip socke ts and the patent at issue wa s a continuation-in-part. 156 F.3d at 1156-57. The independent claims that were added in the continuation covered a prosthes is socket with no specific shape. Id. at 1157-58. Because the written description only disclosed a conical shape fo r the prosthesis and charact e rized other shapes as “prior art” and “inferior” to a co nical shape, we held that the independent claims were unsupported by the written descr iption, not entitled to the par ent’s filing date, and thus invalid in view of intervening prior art. See id. at 1158-60. The only valid claims at issue in Tr onzo were dependent claims that limited t he prosthesis body to having “a generally conical outer surfac e.” The patentee attempted to prove infringement of an accused product with a hemispherical out e r surface under the doctrine of equivalents bec ause, “ [ a]ccording to the exp e rt testimony, any shape would be equiv a lent to the c onical limit ation.” Id. at 1160 (emphasis in orig inal). The theory of

1 As we noted in Optical Disc Corp. v. Del Mar Avion i cs , “ Tronzo does not stand for the proposition that a cl aim limitation describing a s pecific shape of a claimed structure cannot be infringed und er the doctrine of equiv a lents by a differently shaped structure.” 208 F.3d 1324, 1337 (Fed. Cir. 2000). Instead, Tronzo is limited to the fac t s and theories of equivalence pr esented in that case.
05-1311, -1335 19equivalenc e, therefore, did not identify a s pecific elem ent of the accused product as an equivalent to the “generally conical” lim itat ion; rather, t he patentee argued that any shape would be equiv alent to a conical shape, despit e clear indications in t he written description to the contrary. We conclude d that such a theory was insufficient as a matter of law and thus “would write the ‘genera lly conical outer surface’ limitation out the claims.” Id. (citing Warner-Jenkinson , 520 U.S. at 39 n.8). A ccordingly, we reversed the finding of infringement under the doctrine of equivalents. Id. Here, unlik e the patentee in Tr onzo , DePuy did not propose that any s h ape would meet the “spherically-shaped” limitati on. Rather, DePuy’s expert presented particulariz ed declarations dem onstrating its theory that a specific element of the accused device—the hollow conically-sha ped portion of the receiver member—was insubstantially different from the corres ponding “spher ically-shaped” limitation becaus e it supported the screw head, allowed fo r flexible movement, and—when the compression member is engaged—creates a rigid lock between th e screw head and the receiver. Indeed, the expert expr essly identifi ed certain shapes that were different from the accused device but would not be capable of supporting the screw head, allowing flexible movement, and creating a rigid lock when the c o mpression member is engaged. Also, unlik e the patent at issue in Tronzo , the written description in the ’678 patent does not label ot her shapes as “prior art” and “inf erior.” Thus, unlike the theory presented in Tronzo , DePuy’s theory of equivalence was not improper. The district court also erred in c oncludi ng that no reasonable jury could find the conically-s haped por tion to be an equiv a lent to the “spherically-shaped” limitation because it does not do “substantially the same thing.” The district court’s conclus i on

05-1311, -1335 20rested solely on the fact t hat the screw head in the Vert ex® model contacts an edge of the hollow portion as opposed to pressing against a much larger area. Vert ex Order , slip op. at 5. As disc uss ed above, properly construed, the “hollow spheric ally-shaped portion” includes the edge of that portion. Because the screw head in t he Vertex® model presses agains t an edge of a hollow conically-shaped portion argued to be an equivalent of the “spherically-s haped” limitat ion, a ques tion of fact exists as to whether the difference in the equival ent is substantial. Because DePuy’s theory of equivalence is not legally insufficient, and becaus e we find that a quest i on of fact exists as to whether the difference bet ween the “spherically -shaped” limitation and the alleged equivalent is subst antial, we hold that the district court erred in granting summary ju dgment of non-infringe ment under the doctrine of equivalents for the Vertex® m odel. III. Bottom-Loaded Sc rew Models DePuy argues that the district c ourt e rred in granting summary judgment of noninfringement for the bottom-loaded screw models because the court reached its determination without construing the “bore” limitation on whic h the decis ion was bas e d. DePuy als o argues that, to the extent a de facto construction was used in the court’s analys is, the construction inc o rrectly added a proces s limitation to a product claim by construing “passing” to mean that a screw shaft must move through the bore. DePuy argues that “passing” means that the screw shaft is positioned to extend t h rough the bore and does not imply movement. Alternativ ely, DePuy argues that even i f “passing” does imply movement, the screw shaft moves through a snap ring element that meets the “bore” li mitation litera lly or as an equivalent.

05-1311, -1335 21Medtronic counters that De Puy’s argument that “passi ng” means “extend i ng” was waived bec ause it was first advanced on a motion for reconsideration and not originally argued in oppos ition to Medt r onic’s s u mmary judgment motion. Medtronic als o counters that the district court correctly co nstrued the “bore” limit ation as requiring a bore that is part of the receiver chamber when a threaded screw s haft moves through it, and that s u ch a cons truction does not import a process limitatio n into the claims. I n passing, Medtronic asserts t hat the district court rec ognized that the bottom-loaded screw models als o lacked the “opening” limitation and that this limitation provides a further basi s for affirming summa ry judgment of non-infri ngement. Although the district cour t quoted language from claim 1 of the ’678 patent that included the “opening” limitation, it is clear that the c ourt based its conclusion on the “bore” limitation and not t he “opening” limitation. See All Models Order , slip op. at 2 (“In particular, the defendant’s [bottom-loaded s c rew models] lack ‘. . . the receiver chamber (7) having at one end thereof a bore for passing the threaded shaft portion (3) therethrough.’”). I ndeed, the entirety of the infringement analysis was focused on whether the bottom-loaded screw models po ssessed the “bore” limitation: It is important to the C ourt’s conclusion that claim 1 requires t h e bore, through which the threaded shaft of the screw must pass, to be part of the receiver chamber . . . . Because Medtronic’s [bottom-loaded screw models] do not embody this limitation, t hey do not literally infringe claim 1. Nor can infringement be found through application of the doctrine of equivalents

. ” Id. , slip op. at 2-3 (citations omitted). Th us, nothing in the distr i ct court’s summary judgment opinion addresses the “opening” limitation. Howeve r , “[w]e sit to review judgments, not opinions.” Stratoflex, Inc. v. Aeroquip Corp. , 713 F.2d 1530, 1540 (Fed. Cir. 1983). The issue was fully argued bel ow and has been raised by Medrad on

05-1311, -1335 22appeal; we therefore may addre ss the “opening” limitation. See Glaxo, Inc. v. Torpharm, Inc. , 153 F.3d 1366, 1371-72 (Fed. Cir. 1998) (“When a matter comes before an appellat e court following summary judgmen t, the appellate c ourt is free to adopt a ground adv anced by t he appellee in seek ing su mmary judgment but not adopted by the trial court.” )

. The language of claim 1 of the ’678 patent c l aims a rec e iver member with a bore at one end and an opening “opposit e said bore (8) for inserting said screw.” The claim language therefore identifies tw o clear requirements for t he opening: (1) it must be physically located opposit e from the bore and (2) it must be “for inserting s a id screw.” The specification indic a tes that the opening 10 and ho llow cylindrical portion 11 must be of sufficient size to al low the screw head 4 to be inserted into the hollow sphericalsegment-shaped portion 9. ’678 patent, col. 2, ll. 21-34. Thus, when r ead in view of the specification, “for inserting said screw” is a functional limit ation that requires that the opening be capable of inserting the scr ew. We t herefore construe the “opening” limitation to mean that there must be an opening in the rece iver member that i s opposit e the bore and is capable of inserting the screw. Medtronic asserts—and DePu y does not c ontest—that t he aperture at the top of the bottom-loaded sc rew models is not capabl e of inserting the screw because the diameter of that aperture is smaller than the di ameter of the scr ew head. Medtronic argues that this aperture does not meet the requirements of the “ opening” limitation. DePuy appears to counter that the interior space of the receiver member—and not the top aperture—meets the requirement of the “opening” limitation.

05-1311, -1335 23We agree with Medtronic. DePuy’s theor y of infringement ar gues that the snap ring in the bottom-loaded screw models satisfies t he “bore” limitation. Once assembled, the interior space of the receiver member is located ne xt to suc h bore, not opposite to it. The only aperture that is oppos ite to the “bore” that DePu y adv ances is the aperture at the top of the receiver member. However, because it is uncontested that the scre w cannot be inserted through that a perture, it cannot meet the f unctional restriction of the “opening” limitation. Therefor e, we conclude as a matter of law that the bottom-loaded screw models do not posses the “opening” limit ation and affirm the district court’s summary judgment on that basis. Becaus e we affirm summary judgment of no infringement on the basis of the “opening ” limitation, we need not address DePuy ’ s arguments with respect to the “bore” limitation. IV. MAS Model On cross-appeal, Medtronic argues that the district court erred in denying its motion for JMOL of non-infringement of t he MAS model becaus e DePuy failed to offer evidenc e that the MAS model possessed an equivalent to the “pressed against” limitation that performed substantially the same function, in substantially the same way , to achieve substantially the same result. Specifically, Medtronic acknowledges that DePuy offered function-way-result evidenc e related to the “hollow spheric ally-shaped portion” limitation, but argues that no function-way-resu lt evidence was offered demonstrating that pr essing aga inst an edge of a ho llo w porti on is the equivalent of pressing against a hollow portion . Medtronic also argues t hat the court erred in deny ing its motion because the jury’s finding of in fringement by equivalence v i tiated the “spherically -shaped” limitation. Medt ronic argues that here, as in Tronzo , DePuy’s

05-1311, -1335 24expert offered a theory that “any s hape” wo uld meet the “spherically-shaped” limitation, which reads “spherically-shaped” out of the claim. DePuy c o unters that it introduced expe rt testimony that the MAS device possessed an equivalent to the “spherically -shaped” limitation and that the screw head literally presses against that equivalent. DePuy also c ounters that its expert did not testify to an “any shape will do” theory of equivalence. Medtronic’s arguments are un persuasive. F i rst, as disc ussed in Part II.A, supra , the proper construction of “ hollow spheric ally-shaped portion” inc l udes the e dge of that portion. There is no disput e that DePuy presented sufficient evidence that the MA S models possessed the “hollow s pherically-shaped portion” or its equivalent. DePuy als o presented evidenc e t hat the MA S model literally meet s the “pressed agains t” limitation when its expert testified that the scr ew head press e s against an edge of a hollow spherically-shaped por tion or th e edge of an equivalent. That ev idence, together with reasonable inferences in favor of the verdict, make cle a r that Medtronic was not entitled to judgment as a matter of law on this issue. Second, DePuy ’ s e x pert did not o ffer an “any shape will do” theory of equivalenc e similar to the theory offered in T r onzo . In Tronzo , the expert did not identify a specific element in the accus ed dev ice that was an equivalent to the “generally conical” lim itation, but rather testified that any shape would be an equivalent to such a limitation. 156 F.3d at 1160. Here, DePuy’s expert testifi ed that the specific hollow shape of the MAS model was eq uivalent to the “spherically -shaped” limitation according to the function-way-result test. The “any s hape” testimony cited by Medtronic was a reference to earlier deposition testimony on cross - examinati on and ignores the

05-1311, -1335 25witness’s explanation on redirect. On r edirect, the expert ex plained that at the deposition, he believ e d the question was dire cted to whether the “spherically-shaped” limitation had to be literally present in an accused device. His answer reflected his belief that an equivalent would meet the same limitation. Such an exchange at trial does not constitute an assertion or admissi on that “any shape” m eets the “spherically

shaped” limitation. Because DePuy did not offer a le gally insufficient theory of equivalenc e, Medtroni c is not entitled to judgment as a ma tter of law on this issue. V. All Accused Devices Finally, Medtronic argues that the distri ct court failed to properly construe the “compression member” limitation as a means- plus-function limitation, and that under a proper construction, all three acc u sed dev ic es do not infringe. Relying on Mas-Hamilton Group v. Lagard, Inc. , 156 F.3d 1206, 1213 (Fed. Cir. 1998), Medtronic argues on cross-appeal that “compressi on member” is properly construed as a means-plusfunction limitation despite the absence of t he term “means” and that when the claim s are so construed, none of the accused struct ures infringe. Spec ifically , Medtroni c argues that claim 1 of the ’ 678 patent identifies “compressi on member” only in terms of function, not structure, and that no credibl e extrinsic evidence dem onstrates that the term has a well-unders t ood structural meaning in the relevant art. DePuy c o unters that the absenc e of the term “means” creates a presumption that “compression member” is not a means -plus-f unction limitation, th at all testifying engineers recognized that the term “compr ession member” referre d to a well-known class of structures, th at clai m 1 itself impos es certain cons traints on the structure of the compression member, and thus the distri ct court’s construction was correct.

05-1311, -1335 26“Means-plus-function claiming applies only t o purely functional lim itations that do not provide the structure that performs the recited func tion.” Phillips , 415 F.3d at 1311 (citing Watts v. XL Sys. Inc. , 232 F.3d 877, 880-81 ( F ed. Cir. 2000)). “[A] claim term that does not use ‘means’ will trigger the rebuttable pr esumpt ion that [35 U.S.C.] § 112 ¶ 6 does not apply.” CCS Fitness v. Brunswick Corp , 288 F.3d 1359, 1369 (Fed. Cir. 2002). This presumption can be rebutted “by s howing t hat the claim element recite[s] a function without reciting sufficient stru cture for performing that function.” Watts , 232 F.3d at 880. “Our cases make clear, however , that the presumption flowing from the absence of the term ‘ m eans’ is a strong one that is not readily overcome.” Lighting World, Inc. v. Birchwood Lighting, Inc. , 382 F.3d 1354, 1358 (Fed. Cir. 2004). Here, the “ c ompression member” limitat ion does not use the ter m “means,” and the presumption against means -plus-function treatment is not overcome. The claims and the s pecification unmistak ably establish that “ c ompression member” refers to particular structure. The claim language dem onstrates that the compression member must fit inside the cylindrical opening and be of sufficient si ze to exert a force on the screw head, which implies struct ure. ’678 patent, col. 4, ll. 22-24. The specification likewise m a kes clear that the term “compr ession member” refers to a particular cylindric al insert and is not simply a general reference to any stru cture that will perform a particular function. See id. , col. 2, l. 58-col. 3, l. 16, co l

. 3 , l

. 4 4

- c o l

. 4 , l

. 6

. T h e prosecution history, while in ev idence, pr ovides no fu rther guidance one way or the other. However, dictionar y definitions and experts on both sides c onfirm that “compression member” is an expression that was understood by persons of ordinary skill in the art to descri be a kind of structure. Se e Lighting Wor l d , 382 F.3d at 1358

05-1311, -1335 27(“The task of determining whethe r the limitation in question should be regarded as a means-plus-function limitation . . . is a quest i on on whic h evidence fr om experts may be relevant.”). Moreover, Mas-Hamilton is not applicable here. In that case, no other claim terms attri buted structural significance to the elements at issue, and there was no evidenc e that the term at issue had an un derstood structural m eaning in the art. MasHamilton , 156 F.3d at 1213-15 (“[W]e do not see that the remaining terms in the claim limitation

. . . provide any structure necessar y to remove this limitation from the ambit of section 112, ¶ 6.”); id. at 1215 (“The district court det ermined that there was no evidenc e that a ‘mov able link member’ has a well-understood structural meaning in the art.”). That is not the case here. Instead , the overall impression of the claims and specification of the ’678 patent is that “compression membe r” implied structure to one of ordinary skill in the art. This is shown by the intrinsic record and confirmed by the extrinsic evidence. Accordingly, we reject Medtronic’s argument that the district court erred in not construing “compression membe r” as a means-plus-function limitation and in not finding non-infringement of all three models on that basis. VI. JMOL on Lost Profit Damages Medtronic argues on cross- appeal that the court erred in deny ing its motion for JMOL on the subject of lost profits becaus e DePuy Spine did not become an exc l usiv e licens ee of Biederm ann Motech’s ’678 pat ent until the 1999 Exc l usive License Agreement was entered into on August 31, 1999. Because Biedermann Motech lacked manufacturing and m a rketing ca pacity to meet deman d, Medt ronic argues t hat neither

05-1311, -1335 28party can claim lost profit damages prior to that date and that the jury’ s judgment awarding damages from before t hat date should be adjusted. DePuy counters that determining an exc l u s ive lice n s ee relation ship is a factual matter and that substantial evidence suppor ts the jury’s finding that an exc l usiv e licens ee relations hip was created by a 1993 Technology Agreement that became operative with respect to the ’6 78 patent in January 1998. DePuy argues that the 1999 Exc l usiv e License Agreement merely c onfirmed the rights created by the 1993 Technology Agreement. Medtronic replies that determining th e date when lost profits are legally compensable is a question of law and that the district court determined when DePuy Spine became an exclusive licensee in an Order dated November 18, 2002. Medtronic replies that a 1993 Exclusive License Agreem ent specifically addr essed patent rights whereas the 1993 Technology Agreement did not, and that therefore the 1993 Technology Agreement could no t form the basis for an exc l usiv e license under the ’678 patent. Whether DePuy Spine is entitled to lo st profits is a ques tion of law. Pol y America , 383 F.3d at 1310-11. DePuy’s assert ion that determining whether an

exc l usiv e license exist s is a factual matter is based on Wang Laboratories v. Mitsubishi Electronics , 103 F.3d 1571 (Fed. Cir. 1997). Wang Laboratories dealt with whether an implied lic ense was created as a result of the parties’ c onduct. Id. at 1578. Though the parties in Wang Laboratories agreed to submit that question to the jury, id. , we recognized that the ultimate conclusion was a legal one that was based on underlying findings of fact regarding t he parties’ conduc t and the exis tenc e of consideration, id. at

05-1311, -1335 291579-80. Here, the underlying fact s are not in dispute. Acco rdingly, we review this issue de novo

. Medtronic limits its cross- appeal to a challenge of the jury’s lost profit awar d during the period prior to the 1999 Exc l usiv e Lic e nse Agreement, arguing that (1) DePuy Spine was not an excl usive licensee during the relev ant time period, and therefore its lost profits were not reco verable; and (2) Biedermann Motech lack ed manufacturing and marketing capacity to meet demand, and therefore it had no bas i s t o recover its own lost profits. Medtronic does not contest that if DePuy Spine was an

exc l usiv e licensee dur ing the relevant time period, it is entitled to the lost profits at issue here. See Weinar v. Rollform In c. , 744 F.2d 797, 806-08 (Fed. Cir. 1984) (affirming an award of lost profit damages to a licensee with the exclusive right to sell in the entir e United States). We begin our analysis by determinin g whether DePuy Spine was an

exc l usiv e licensee of the ’678 pat ent during the relevant time period. Medtronic’s assertion that the district c ourt ruled on this issue with finality in its November 18, 2002 Order is incorrect. In that Order, the c ourt stated that “[t]he standing of Plaintiff DePuy Acr o med, Inc., commenced on August 31, 1999, when Biedermann Motech granted DePu y Acrom ed an exclusive lic ense to the ’678 patent.” DePuy Acr o med, Inc. v. Medtronic Sofamor Danek, Inc

. , No. 01-10165-EFH (D. Mass. Nov. 18, 2002). To the extent this order re flected the court’s init ial conclusion, that conclus i on was appar ently reversed. In denying Medt ronic’s motion in limine to exclude evidenc e of lost profits damages before Augus t 31, 1999, the district court found that “Biedermann Motech can recover lost profit s [before August 31, 1999] because it was ‘closely tied’ via a joint venture to t he manufacturer, DePuy Acromed, Inc.” DePuy

05-1311, -1335 30Acromed, Inc. v. Medtronic Sofamor Danek, Inc. , No. 01-10165- EFH (D. Mass. Sept. 14, 2004) (citing WMS Gaming, Inc. v. Int’l Game Tech. , 184 F.3d 1339, 1361 (Fed. Cir. 1999)). In denying Medtronic’s renewed motion for JMOL on t he subject of lost profit damages, the court noted that DePuy “intro duced ex tensive evidence that DePuy had

an exc l usiv e license to the patent in suit as of January 23, 1998.” DePuy Acr o med, Inc. v. Medtronic Sofamor Danek, Inc. , No. 01-10165-EFH ( D . Mass. Feb. 15, 2005). Thus, the court ultimately conclu ded that DePuy was an exc l usiv e licensee as of January
1998. We must therefore examine the 1993 Tec hnology Agreement to determine if it supports the conc lusion that DePuy was an exc l usiv e licensee to t he ’678 patent under its terms

. Determining whether a lic ensee is an ex c l us ive licensee or a bare lice n see is a question of ascertai ning the intent of the parties to the lic ense as manifested by the terms of their agr eement and examining the substanc e of the grant. The use of the word “exclusive” is not controlling; what matters is the substance of the a rrangement. Because patent rights are rights to “exclude others,” a licensee is an exc l usiv e licens ee only if the patentee has promised, expres sly or im pliedly, that “others shall be exc l uded from practicing t he invention” within the field covered by the licens e. Put another way, an exclusive li cense is “a license to practice the invention accompanied by the patent owner's promise that others shall be exc l uded from practicing it within the field of use wherein the licensee is given leave.” Textile Prods. v. Mead Corp. , 134 F.3d 1481, 1484 ( F ed. Ci r. 1998) (internal c i tation s omitted). The 1993 Technology Agreement provi des that it shall be construed in accordanc e with Indiana law. Indiana follows the “four co rners rule” of contract interpretation in which courts do not look beyond the instrument in question to determine the parties ’ intent if the terms of the instrument are unambiguous. Schmidt v.

05-1311, -1335 31Schmidt , 812 N.E.2d 1074, 1080 (Ind. Ct. App. 2004); see als o Univ. of S. I nd. Found. v. Baker , 843 N.E.2d 528, 532 (Ind. 2006). “The terms of a contract are ambiguous on ly when reas onably intelligent pers ons would honestly differ as to the meaning of those terms.” Sc hmidt , 812 N.E.2d at 1080; see also Baker , 843 N.E.2d at 532. The terms of the 1993 Technology Agreement unambiguou s ly provide an

exc l usiv e license to DePuy Spine for all of Biederm ann Motech’s current and future knowledge, techniques, processes, data des igns, prints, drawings, spec ifications, procedures and other information relating to the manufacture of any product for use in the treatment of the human spine. In January 1998, Biedermann Motech acquired the ’678 patent , which covers a particular design of pedicle screw for use in the treatment of the human spine. It follows that in 1998, when Biedermann Motech acquired the ’678 patent, it acquired the design of the products covered by that patent as well. That design is a “future” design under the expres s terms of the 1993 T e chnology Agreement and provides a basis for the jury ’s lost profit award. The terms of the 1993 and 1999 Exc l usiv e Li cense Agr eements do not affect this conclus i on. First, the 1993 Exc l usive Li c ens e Agreement is a lic ense between Ort- Med , the licensor, and DePuy Spine, the licens ee . Ort-Med never was—nor became—the owner of the ’678 patent. Thus, the 1993 Excl usive License Agr eement is not relevant to any determination of rights as between Biederm ann Motech and DePuy Spine. Second, the 1999 Exc l usive License Agreement was entered into on Augus t 31, 1999; it is thus not relevant to the rights that were created between the parties by the 1993 Technology Agreement entered into on F e bruary 4, 1993. Theref ore, we conclude that

05-1311, -1335 32DePuy was entitled to lost pr ofit damages prior to August 31, 1999, and the court di d not err in denying Medtronic’s motion for J M OL on thi s issue. CONCLUS ION Because the district court erred in cons truing the scope of the “hollow spheric a llyshaped por tion” in the ’678 patent to excl ude the edge thereof, and because the court erred in limiting applic ation of the doctrine of equivalents, we reverse the district court’s summary judgment of non-in fringement under the doctrine of equivalents on the Vertex® model and remand for furt her proceedings. We affirm the district court’s grant of summary judgment of no literal in fringem ent for the Vertex® m odel. Because we conclude that the botto m-loaded screw models lac k the “opening” limitation a s a matter of law, we affirm the district court’s grant of summary judgment of non-infringement for the bottom-l oaded screw models. Because the jury verdict finding that t he MAS model infringed the ’678 patent under the doctrine of equiv a lent s was supported by subst antial evidence and bec a use the theory of equivalence was not legally ins u fficient, we hold t hat the district did n o t err in denying Medtronic’s motion fo r JMOL of non-infringement. Because the district cour t correctly determined that DePu y became an exc l usiv e licens ee of the ’678 patent prior to August 31, 1999, the district court did not err in denying Medtroni c’s motion for JMOL to preclude an award of lost profi t damages prior to that dat e. We therefore affirm the jury verdict and damages award on the MAS model. AFFIRMED-IN-PART, REV E R S E D -IN-PART , AND RE MANDE D. COSTS Costs to DePuy.

05-1311, -1335 33