1 

UNITED STATES DISTRICT COURT 

NORTHERN DISTRICT OF INDIANA 

HAMMOND DIVISION 

OPINION AND ORDER 

A. Introduction 

On March 8, 2013, Plaintiff Biomet, Inc. (“Biomet”), filed a Declaratory Action 

regarding fifteen patents against Defendant, Bonutti Skeletal Innovations LLC (“Bonutti”). The 

parties have resolved the dispute as to five of the fifteen patents. Among the remaining patents, 

the parties initially disagreed on eleven terms in six patents. One day before the claim 

construction hearing, the parties reached a stipulation on two disputed term. They further agreed 

not to present arguments on one of the asserted patents. As a result, claim construction is 

narrowed down to seven terms in five patents: U.S. Patent Nos.: 7,708,740 (“the ‘740 patent”), 

7,806,896 (“the ‘896 patent”), 7,828,852 (“the ‘852 patent”), 7,931,690 (“the ‘690 patent”), and 

8,133,229 (“the ‘229 patent”). The five patents can be grouped into two categories: three patents 

(the ‘896, ‘740, and ‘229 patents) relate to knee replacement surgery (“Knee Surgery Patents”) 

and two patents (the ‘852 and ‘690 patents) relate to using bone growth materials to artificially 

stimulate bone growth around surgical implants (“Bone Growth Patents”). The seven terms in 

Biomet Inc., 

 Plaintiff, 

v. 

Bonutti Skeletal Innovations LLC,

    Defendant. 

Case No. 3:13-CV-176 JVB 
2 

dispute include two terms in the Knee Surgery Patents and five terms in the Bone Growth 

Patents. The Court, having reviewed the evidence, and having considered the arguments of the 

parties, now makes its claim construction ruling. 

 

B. Standard of Review 

Claim Construction is a matter of law. Markman v. Westview Instruments, Inc., 52 F.3d 

967, 979 (Fed. Cir. 1995). Words of a claim are generally given their ordinary and customary 

meaning. Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (internal citation 

omitted). The ordinary and customary meaning of a claim term is the meaning that the term 

would have to a person of ordinary skill in the art in question at the time of the invention. Id. at 

1313. In many cases, however, the meaning of a claim term as understood by persons skilled in 

the art is often not immediately apparent. Id. As a result, the Court looks to a number of sources 

to ascertain the meaning. Those sources include: “the words of the claims themselves, the 

specification, the prosecution history, and extrinsic evidence concerning relevant scientific 

principles, the meaning of technical terms, and the state of the art.” Id. at 1314 (internal citation 

omitted). 

To begin with, the Court looks at the claims themselves. There are several principles 

guiding the usage of claim language in claim construction. First, the Court looks at the use of a 

term within the asserted claim. Id. In addition, other claims of the patent in question, both 

asserted and unasserted, can be valuable sources as to the meaning of a claim term. Id. For 

example, the presence of a dependent claim that adds a particular limitation gives rise to a 

presumption that the limitation in question is not present in the independent claim. Id. at 1315. 
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Furthermore, it is presumed that claim terms are normally used consistently throughout the 

patent. Id. at 1314. 

The claims, however, do not stand alone. Rather, they must be construed so as to be 

consistent with the specification. Id. at 1316 (internal citation omitted). In some cases, the 

patentee has provided a special definition to a claim term. In other cases, the patentee has 

intentionally disclaimed a claim’s scope. Those instances are regarded dispositive in claim 

construction. Id. 

Besides the specification, the Court also considers the patent’s prosecution history. Id. at 

1317. Like the specification, the prosecution history provides evidence of how the PTO and the 

inventor understood the patent. Id. Yet, because the prosecution history represents an ongoing 

negotiation between the PTO and the applicant, rather than the final product of that negotiation, 

it often lacks the clarity of the specification and thus is less useful for claim construction 

purposes. Id. Nonetheless, the prosecution history can often inform the meaning of the claim 

language by demonstrating how the inventor understood the invention and whether the inventor 

limited the invention in the course of prosecution, making the claim scope narrower than it 

would otherwise be. Id. 

In addition to the patent and prosecution history, the Court is allowed to use extrinsic 

evidence including expert and inventor testimony, dictionaries, and learned treatises. Id. Within 

the class of extrinsic evidence, dictionaries, especially technical dictionaries, may be proper tools 

to assist the court in determining the meaning of particular terminology to those of skill in the art 

of the invention. Id at 1318. Expert evidence can also be useful to a court for a variety of 

purposes, such as to provide background on the technology at issue, to explain how an invention 

works, to ensure that the court’s understanding of the technical aspects of the patent is consistent 
4 

with that of a person of skill in the art, or to establish that a particular term in the patent or the 

prior art has a particular meaning in the pertinent field. Id. However, expert testimonies should 

be discounted when they are conclusory assertions on the definition of a claim term, or when 

they are at odds with the patent and prosecution history. Id. In general, the Federal Circuit has 

viewed extrinsic evidence as less reliable than the patent and its prosecution history in 

determining how to read claim terms. Id. Nonetheless, because extrinsic evidence can help 

educate the Court regarding the field of the invention and can help the Court determine what a 

person of ordinary skill in the art would understand claim terms to mean, it is permissible for the 

Court in its sound discretion to admit and use such evidence. Id. at 1319. 

C. Terms in Dispute 

(1) The Knee Surgery Patents 

The three Knee Surgery Patents (the ‘896, ‘740, and ‘229 patents) are continuations from 

U.S. Pat. 7,104,996. The patents teach various aspects of surgical methods and techniques for a 

partial or total knee replacement surgery. Generally, in a knee replacement surgery, surgeons 

first make an incision on the knee. After exposing the knee, the surgeons move or evert the 

patella and make several cuts on the end of the femur using femoral cutting guides. The cutting 

guides have traditionally been intramedullary rod and extramedullary rod. After the cuts on 

femur, surgeons cut the top of the tibia using tibial cutting guide. Subsequently, the surgeons 

resurface the back of the patella and implant the joint components. As part of the process, 

ligament balancing is also checked to ensure proper function of the knee. 

To improve this surgical process, the ‘740 patent teaches a method of ligaments 

balancing during the knee surgery. The ‘229 patent claims a method of sliding the patella to the 
5 

side which helps to reduce the size of the incision. Lastly, the ‘896 patent discloses using side 

cutting guide, hologram, and robot in addition to intramedullary rod to assist femoral cutting. 

Terms in dispute for Knee Surgery Patents are: “computer navigation system” and “side 

surface.” The term “computer navigation system” appears in the ‘896 patent while the term “side 

surface” appears in all three Knee Surgery Patents. 

(a) “Computer navigation system” 

This term appears in claim 3 of the ‘896 patent. Biomet construes the term as: “a 

computer system having locating devices attached to the femur and tibia.” Bonutti, on the other 

hand, proposes the term’s definition as “a computer system used to control the course, position, 

or alignment of joint replacement components.” The parties’ dispute centers on whether the 

“computer navigation system” must include locating devices, and if it does require locating 

devices, whether such locating devices must be attached to femur and tibia. 

Claim 3 of the ‘896 patent teaches: “[t]he method of claim 1 wherein a computer 

navigation system is used in the determining step.” This claim is dependent from claim 1 of the 

same patent. Claim 1’s determining step states: “determining a position of a cutting guide using 

references derived independently from an intramedullary device.” Claims 1 and 3 taken together 

show that the “computer navigation system” is an alternative to intramedullary device and is 

used to determine the positions of a cutting guide. Unfortunately, neither these two claims nor 

other claims in the patent shed more lights on what the “computer navigation system” actually is. 

With the claims in mind, the analysis turns to the patent’s specification. One of the key 

paragraphs discussing “computer navigation system” shows that the locating devices are a part of 
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the “computer navigation systems” but such locating devices are not required to be attached to 

femur and tibia. Specifically, the paragraph states: 

It is contemplated that emitters, receivers, and/or reflectors of computer 

navigation systems could be pinned or otherwise attached onto the femur 126 and 

tibia 214 to provide cutting positions and to facilitate ligament balancing through 

relatively small incisions. 

(‘896 patent, col. 36, lns. 55 – 62 (emphasis added).) 

 Plain meaning of the word “of” shows that emitters, receivers, and/or reflectors are 

components of the computer navigation system. The parties have not disputed that locating 

devices are not “emitters, receivers, and/or reflectors.” In addition, other sections of the 

specification are consistent with the interpretation that locating devices are a part of the computer 

navigation system. (See id. col. 42, lns. 8 – 18 (“[I]t is contemplated that a computer navigation 

system may be used with the robot 370 to guide movement of a cutting tool, such as a saw or 

milling cutter, relative to the tibia and femur in the leg 70 of the patient. Two or more locating 

devices are connected with the distal end portion 124 of the femur 126. In addition, two or more 

locating devices are connected to the proximal end portion of the tibia 214. The locating devices 

cooperate with motors and computer controls 386 for the robot 370 to provide the robot with 

information as to the position of the mounting section 396 and cutting tool relative to the femur 

126 and tibia 214.”); see also id. Col. 42, lns. 48 – 51 (“computer controls which respond to the 

locating devices provide information to the surgeon about cutting tools and/or other instruments 

being moved by the articulate arms.”)) 

 Biomet further argued that the locating devices must be pinned to femur and tibia. This 

argument, however, imports improper limitation into the claim. The written description has 

explicitly stated that the locating devices “could be pinned or otherwise attached onto the femur 
7 

126 and tibia 214.” The use of the phrase “could be” shows that it is not mandatory for the 

locating devices to be attached to femur and tibia. 

 Bonutti also urged the Court not to adopt Biomet’s construction because the paragraphs 

cited above are merely examples. Specifically, Bonutti quotes the following language in the 

Generation of Images and Robotic Device section: 

The above-described image guided surgery system is merely intended to be 

representative of the type of system that can be used with the present invention. 

However, it should be understood that other known image guided surgery 

systems, both in conjunction and independent of robotic systems, could be 

utilized if desired. Examples of commercially available systems include systems 

the Z-KAT (Hollywood, Fla.) suites, the MEDIVISION system (Oberdorf, 

Switzerland), the STEALTH NAVIGATOR system (Louisville, Colo.), and the 

ORTHOPILOT System (Tuttlingen, Gemany). 

(Id. col. 42, lns. 30 – 39.) 

 The quoted disclaimer only applies to “the above-described image guided surgery 

system” which is the system described in the Generation of Images and Robotic Device section 

of the patent. It does not apply to every paragraph describing computer navigation system. For 

example, the paragraph in col. 36, lns. 55 – 62 (quoted before) provides general statements on 

the usage, functionalities, and components of the computer navigation system. It is in a separate 

section of the patent; and thus does not fall within the scope of the quoted disclaimer. In 

addition, the prosecution history has cited this paragraph to distinguish prior art because the 

present invention “provides attachment of a cutting guide to a femur without first resecting the 

femur, and without connection to an EM or IM rod.” (‘896 patent file history, 10/9/2007 

Response to Office Action at 11.) This further shows that the paragraph in col. 36, lns. 55 – 62 is 

not merely intended as an example. 
8 

 For the above-mentioned reasons, the Court construes “computer navigation system” as 

“a computer system having locating devices and such system is used to control the course, 

position, or alignment of joint replacement components.” 

(b) “Side surface” 

The parties agree that the definition of the term “side surface” includes lateral (outside) 

and medial (inside) surface of a knee. However, Bonutti argues that the definition should also 

incorporate posterior (back) and anterior (front) surfaces. Figures 1 – 31 below illustrate major 

anatomical structures of a knee. 

The disputed term appears in multiple dependent claims including claim 4 of the ‘896 

patent, claim 33 of the ‘229 patent, and claims 23 and 24 of the ‘740 patent. 

Claim 4 of the ‘896 patent discloses: “the method of claim 1 wherein the positioning step 

includes removably attaching the cutting guide to the side surface of the distal end portion of the 

femur.” (Emphasis added.) Claim 4 is a dependent claim of claim 1. Claim 1’s positioning step 

states: “positioning a cutting guide using the determined position, passing the cutting guide 

                                                            

1 Biomet Opening Br. at 6 (DE 71).
9 

through the incision and on a surface of a distal end portion of an unresected femur, the cutting 

guide secured to the bone free of an extramedullary or intramedullary alignment rod.” (Emphasis 

added.) Although claim 4 uses “the side surface”, claims 1 – 3 don’t have the phrase “a side 

surface.” This lack of antecedent basis for the term “the side surface” is not fatal, however, if the 

meaning of the claim would reasonably be understood by persons of ordinary skill when read in 

light of the patent. See Energizer Holdings, Inc. v. Int’l Trade Comm’n, 435 F.3d 1366, 1370 

(Fed. Cir. 2006). 

Because claim 4 is a dependent claim of claim 1, the doctrine of claim differentiation 

creates a presumption that the scope of claim 4 is narrower than that of claim 1. See Phillips, 415 

F.3d at 1315 (“[T]he presence of a dependent claim that adds a particular limitation gives rise to 

a presumption that the limitation in question is not present in the independent claim.”). Because 

claim 1 teaches attaching the cutting guide to a surface of the femur and claim 4 discusses 

attaching the cutting guide to a side surface, presumable side surface is narrower than any 

surface of the femur. 

Claim 23 of the ‘740 patent also provides insights into the meanings of “side surface.” 

The claim states: “the method according to claim 20, wherein the primary incision is located on a 

side surface of the knee joint, the side surface being one of medial and lateral relative to the 

centerline of the patient.” Bonutti argues that restricting “side surface” to medial and lateral sides 

would render the sentence “the side surface being one of medial and lateral relative to the 

centerline of the patient” superfluous. The Court disagrees. Even if “side surface” means only 

medial and lateral surfaces, the phrase “a side surface” itself is ambiguous as to which specific 

surface the claim is referring. The quoted sentence above merely clarifies the side surface could 

be either medial or lateral surface. Bonutti also uses claim 14 of the ‘896 patent to support the 
10 

same argument. However, claim 14, a dependent claim, narrows the definition of side surface to 

“the medial or lateral side of the end portion of the first bone.” (Emphasis added.) Even if 

“side surface” is interpreted as medial or lateral surface, the phrase “the end portion of the first 

bone” still prevents claim 14 from being superfluous because it shows that claim 14 is only 

related to a specific bone instead of providing a narrower example of side surface. 

In addition, the specification of the Knee Surgery Patents has consistently shown that the 

side surface is the medial or lateral surface. Figure 54 illustrates the manner in which “a femoral 

cutting guide may be mounted on a side surface of a femur in a patient’s leg.” (‘896 patent, col. 

8, lns. 31 – 33.) In explaining Figure 54, the specification states: 

A femoral cutting guide 800 is illustrated in FIG. 54 as being mounted on a lateral 

surface 802 of the femur 126. However, the femoral cutting guide 800 could be 

mounted on the medial surface of the femur 126 if desired. When the cutting 

guide 800 is mounted on the lateral surface 802 of the femur 126, the incision 114 

(FIG. 6) is laterally offset. 

(Id. col. 70, lns. 18 – 22.) In addition, Figure 55 also shows that side surface 802 is on the medial 

or lateral side. Nevertheless, Bonutti argues that the description of Figure 55 supports its broad 

construction by pointing to the following two sentences: 

In the embodiment illustrated in FIG. 55, the image 850 is projected onto a side 

surface 802 of the femur 26. If desired, a three dimensional image may be 

projected onto all sides of the distal end portion 124 of the femur 126. 

(Id. col. 73, lns. 43 – 46 (emphasis added).) Reading the two cited sentences as a whole, the 

Court finds that the terms “side surface” and “all sides” are not interchangeable. The second 

sentence merely discusses another way of projecting image. It does not inform the meaning of 

“side surface” one way or the other. In another word, an image may be projected onto all sides of 

the femur, regardless of whether a side surface means one of two surfaces or one of the four 

surfaces. 
11 

Lastly, in the prosecution history, Dr. Bonutti has distinguished the prior art reference by 

stating that the prior art does not have a cutting guide “positioned on a side surface of an end 

portion of a bone.” Rather, the prior art “discloses anterior and posterior gauges extending from 

the block and interlocking within the block.” (‘896 patent file history, 4/30/2007 Response to 

Office Action at 12.) By distinguish “side surface” from the anterior and posterior surface in the 

prior art, it shows that Bonutti does not intend “side surface” to incorporate posterior and anterior 

surfaces. 

 For these reasons, the Court construes “side surface” as “medial or lateral surface.” 

(2) Bone Growth Patents 

 The Bone Growth Patents (the ‘852 and ‘690 patents) share similar specifications. They 

generally relate to an implant inlaid in a recess created in a bone. Such implant may contain 

materials that promote bone growth so as to cause fixation between the implant and the bone. 

The growth is possible because bone tissue has the ability to regenerate completely if there are 

spaces and materials facilitating bone growth. A bone growth material can provide a scaffold to 

guide new bone growth. It can also include substances that induce and accelerate bone growth. 

The bone growth process may be facilitated by a combination of scaffold and growth promoting 

substances or by scaffold alone. 

 Terms in dispute for Bone Growth Patents include —— 

 “inner surface including a bone growth promoting material /substance”; 

 “growth promoting body supporting said surface”; 

 “growth promoting body including a material that promotes tissue ingrowth thereinto / 

growth promoting body is operative to promote tissue growth into a surface thereof”; and 
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 “growth promoting body that includes a material that promotes osteoinduction.” 

(a) Bone Growth Terms 

 The Bone Growth Patents discuss bone growth terms in three contexts: “growth 

promoting body,” “growth promoting material/substance,” and “material that promotes tissue 

ingrowth.” The main dispute is whether the definitions of bone growth terms must include 

biological substances. Biomet takes the position that scaffold alone is not enough: the claim 

terms should be construed to include both scaffold and additional biological materials. Bonutti, 

on the other hand, argues that the terms should be construed as a material or substance known for 

promoting bone growth. 

 Terms concerning “growth promoting body” appear in claims 34, 36, 37, 58, 59 of the 

‘852 patent. Claim 34 of the ‘852 patent describes the structure and content of the growth 

promoting body as the following: 

a growth promoting body supporting said surface, and positionable between said 

surface replacement and bone of the joint, said growth promoting body 

including a material that promotes tissue ingrowth thereinto, wherein a load 

applied to the surface replacement is transferrable to bone of the joint through 

said growth promoting material. 

(Emphasis added.) The plain meaning of the phrase “material that promotes tissue ingrowth” 

does not suggest that the growth promoting body must include both the scaffold and the 

biological materials. In addition, the dependent claims of the ‘852 patent discloses that the 

growth promoting body can contain either osteoinductive materials or ceramic materials. (‘852 

patent, claims 34 and 46.) Because ceramic materials are not biological substance, the “growth 

promoting body” is not required to contain biological substance. 
13 

 The term “growth promoting materials” appears in the context of promoting tissue 

ingrowth. Claim 34 of the ‘852 patent recites: “said growth promoting body including a material 

that promotes tissue ingrowth thereinto.” Claim 56, a dependent claim of claim 34, further states: 

“[t]he implant of claim 34, wherein said material that promotes tissue ingrowth promotes bony 

tissue ingrowth into said growth promoting body.” The plain language of claims does not suggest 

that the growth promoting materials should incorporate both the scaffold and biological 

substance. 

 Furthermore, the specification shows that the material promoting tissue ingrowth does not 

have to contain biological materials. Specifically, the specification of the ‘852 patent discloses: 

It may also be advantageous to include some type of known tissue in-growth 

promoting features on at least a portion of body 1404. Such features include a 

porous or textured surface, a porous body (for example so-called “foam metals”), 

and osteoinductive or osteoconductive materials or factors. 

(‘852 patent, col. 106, lns. 34 – 39.) The plain reading of the cited paragraph shows that the 

material promoting tissue in-growth can be a textured surface or osteoconductive materials, 

which are not necessarily biological substance. 

 Biomet argues that claim 34 of the ‘852 patent provides two components. The first 

component is the “growth promoting body” which provides a scaffold for bone growth while the 

second component is a “material” to stimulate bone growth. The Court agrees that “growth 

promoting body” and material promoting issue ingrowth refer to slightly different things. 

Nevertheless, as mentioned above, both phrases do not have a built-in requirement for biological 

substances. 

The parties also dispute the meaning of the term “growth promoting material/substance” 

in claims 18 and 44 of the ‘852 patent as well as claim 32 of the ‘690 patent. Claim 18 of the 
14 

‘852 patent is directed to a multi-layered implant, which has an outer layer and a base layer. The 

claim describes the layered implant with growth promoting substance as the following: 

An implant for implantation in a recess created in a portion of a single articular 

surface on a bone, the implant comprising: ... a base layer, supporting the outer 

layer, and having an inner surface configured and dimensioned to engage bone 

tissue when inserted in the recess, the inner surface further including a bone 

growth promoting substance. 

(Emphasis added.) 

 Claim 44 of the ‘852 patent depends from claim 43 which further depends from claim 34. 

Claim 34 discusses placing a bone growth promoting materials inside the growth promoting 

body. It recites: 

A growth promoting body supporting said surface, and positionable between said 

surface replacement and bone of the joint, said growth promoting body including 

a material that promotes tissue ingrowth thereinto, wherein a load applied to the 

surface replacement is transferrable to bone of the joint through said growth 

promoting material. 

 Referring to the implant in claim 34, claim 43 recites: “The implant of claim 34, wherein 

the articulating load bearing surface replacement includes a smooth metallic surface.” Claim 44 

further recites: “the implant of claim 43, wherein the foam metal material incorporates a bone 

growth promoting material or a healing agent.” Claim 32 of the ‘690 patent also uses similar 

language and structure. The plain language of these claims does not require bone growth to be 

based on the biological properties of the material. Additionally, specification consistently 

states that the bone growth materials are not limited to biological materials. For example, the 

Layered Implant Section of the ‘852 patent describes the composition of base layer as follows: 

The inner layer 678 may be formed of bone growth promoting materials which 

promote migration of bone cells from the bone 674 to the base layer 678. New 

bone growth into the base layer 678 will interconnect the base layer and the bone 

674. The base layer 678 may contain cortical cancellous bone power or chips 

and/or demineralized bone matrix, bone morphogenic protein, anti-inflammatories 

and/or immuno suppressants may be disposed in the base layer 678. An antibiotic, 
15 

hydroxyapatiate, tricalcium phosphate and/or polymers and copolymers may also 

be included in the base layer 678. 

(‘852 Patent, col. 59, lns. 60 – col. 60, lns. 3.) Furthermore, the ‘852 patent’s specification also 

teaches the use of bone fragments as a material inducing bone growth: 

The scaffold holds bone growth inducing materials and may include bone 

fragments to which tri-calcium phosphate, an antibiotic, hydroxyapatiate, 

allografts, autografts, and/or any other polymeric has been added. It is believed 

that it will be particularly advantageous to provide a bone growth morphogenetics 

protein in the implant 626 to promote the growth of bone into the implant. The 

scaffold may hold cultured and/or noncultured cells which promote biological 

resurfacing. 

(Id., col. 55, lns. 62 – col. 56, lns. 3.) Similar paragraphs also appear in other parts of the patent. 

 

(See id., at col. 58, lns. 42 – 65.) 

As shown in the cited paragraphs, although the implant may contain biological materials 

such as bone growth morphogenetics proteins, it does not have to incorporate biological 

substance. For example, tricalcium phosphate, polymers, or bone chips may be included in the 

implant. 

 For all these reasons, the Court construes bone growth terms according to their ordinary 

and customary meaning. Accordingly: 

 “Inner surface including a bone growth promoting material/substance” in claims 18, 44 of 

the ‘852 patent, and claim 32 of the ‘690 patent in construed as a [material/substance] 

that encourages bone tissue to grow. 

 “Growth promoting body supporting said surface” in claims 34, 36, 37, 58, 59 of the ‘852 

patent is construed as body that encourages tissue to grow. 

 “Growth promoting body including a material that promotes tissue ingrowth thereinto” in 

claim 34 of the ‘852 patent and “material that promotes tissue ingrowth promotes bony 

tissue ingrowth into said growth promoting body” in claim 56 of the ‘852 patent are 
16 

construed as growth promoting body including a material that encourages tissue to grow 

into the growth promoting body. 

 “Growth promoting body is operative to promote tissue growth into a surface thereof” in 

claim 59 of the ‘852 patent is construed as growth promoting body is operative to 

encourage tissue to grow into a surface of the growth promoting body. 

(b) “Growth promoting body that includes a material that promotes osteoinduction” 

 Parties dispute the meaning of the phrase “growth promoting body that includes a 

material that promotes osteoinduction” in claim 35 of the ‘852 patent and claim 24 of the ‘690 

patent. At the heart of the dispute is the definition of “osteoinduction.” The parties agree that 

“osteoinduction” is a well-known term in the medical field. The parties, however, cannot agree 

on the commonly known definition. Without finding much support in the intrinsic evidence, 

Bonutti relies on dictionary and expert testimony arguing that the term means stimulating 

development and formation of a bone. Meanwhile, Biomet mainly uses an article from a 

European medical journal and proposes the definition to be “the portion of the implant 

underlying the surface having a substance that stimulates bone tissue to grow by causing 

undifferentiated cells to become bone forming cells based on biological properties of the 

substance.” Having construed the term “growth promoting body,” the Court will focus its 

analysis on “osteoinduction” alone. 

 Claim 35 of the ‘852 patent is a dependent claim of claim 34. Claim 35 requires “growth 

promoting body” in claim 34 to promote osteoinduction. Presumably, the scope of claim 35 is 

narrower than claim 34. See Liebel–Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 910 (Fed. Cir. 

2004) (“The presence of a dependent claim that adds a particular limitation raises a presumption 
17 

that the limitation in question is not found in the independent claim.”). As the Court discussed in 

the previous section, the “growth promoting body” is construed as “body that encourages tissue 

to grow.” If Bonutti’s construction is adopted, the scope of claim 35 would be as broad as claim 

34, where both claims disclose a “growth promoting body” which includes a material that 

facilitates bone growth. This violates the basic principle of claim differentiation mentioned 

above. The same analysis also applies to “osteoinduction” in claim 24 of the ‘690 patent. 

 Specification also suggests that the scope of “osteoinduction” is narrower than 

“stimulates development and formation of bone.” For example, the specification distinguishes 

osteoinductive materials from form metals and osteoconductive materials. Specifically, the 

specification of the ‘852 patent states: 

It may also be advantageous to include some type of known tissue in-growth 

promoting features on at least a portion of body 1404. Such features include a porous 

or textured surface, a porous body (for example so-called “foam metals”), and 

osteoinductive or osteoconductive materials or factors.

(‘852 patent, col. 106, lns. 36 – 39 (emphasis added).) The bold phrase separately lists 

“osteoinductive materials” and “foam metals” suggesting that they are different kinds of 

materials. Similarly, the conjunction “or” shows that osteoinductive and osteoconductive 

materials are not of the same type.2

 However, under Bonutti’s construction, “osteoinduction” 

would cover “form metal”3

 as well as osteoconductive materials. This construction is not 

consistent with the specification. 

 Although the definition of “osteoinduction” remains unclear after examining the intrinsic 

evidence, the intrinsic evidence does suggest that the term is narrower than “stimulates 

development and formation of bone.” With this in mind, the Court turns to the extrinsic 

evidence. See Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1584 (Fed. Cir. 1996) 

                                                            

2 See also, ‘852 patent, col. 57, lns. 5 – 18 and col. 58, lns. 50 – 68. 3

 Hr’g Tr. vol. 2, 64:2 - 10, Sept. 24, 2014. 
18 

(reliance on extrinsic evidence to interpret claims is proper only when the claim language 

remains genuinely ambiguous after considering the intrinsic evidence). 

As discussed earlier, Bonutti’s dictionary definition is inconsistent with the patent’s 

claims and specification. Therefore, the Court will not adopt Bonutti’s proposed construction. 

See id (extrinsic evidence that contradicts intrinsic evidence is accorded no weight). The article 

proffered by Biomet, discusses osteoinduction and osteoconduction process, among other things. 

Specifically, the article distinguishes osteoinduction from osteoconduction. It describes 

osteoinduction as a process where primitive, undifferentiated cells (such as a mesenchymal cell) 

are transformed into preosteoblast cells. Osteoconduction, on the other hand, represents the 

process where bones grow onto a surface. (Biomet Ex. 25, Albrektsson at S96 – 97 (DE 72).) In 

addition, the Court’s own search in databases has found other scientific articles published around 

the same time of the disputed patents. These articles have similar understanding as Biomet 

regarding the meaning of osteoinduction. For example, one article describes osteoinduction as 

involving “the recruitment of mesenchymal stem cells to become osteoblasts.” Lyndon F. 

Cooper, Biologic Determinants of Bone Formation for Osseointegration: Clues for Future 

Clinical Improvements, Journal of Prosthetic Dentistry 80(4): 442 (1998). Similarly, another 

article describes osteoinductive stimuli as factors or signals that cause osteoblastic 

differentiation. James E. Fleming Jr. et al, Bone Cells and Matrices in Orthopedic Tissue 

Engineering, Orthopedic Clinics of North America 31(3): 358 (2000). The articles taken together 

with the intrinsic evidence show that the ordinary meaning of “osteoinduction” at the time of the 

invention means causing undifferentiated cells to become bone forming cells. Accordingly, the 

Court construes “growth promoting body includes a material that promotes osteoinduction” as 
19 

growth promoting body includes a material that stimulates bone tissue to grow by causing 

undifferentiated cells to become bone forming cells. 

D. Conclusion 

The claims, terms, and phrases of the patent at issue are thereby construed and set forth in 

this Order. 

Date: April 10, 2015 

 s/ Joseph S. Van Bokkelen 

 JOSEPH S. VAN BOKKELEN 

 UNITED STATES DISTRICT JUDGE