a different size and shape” of another of the bodies (9:11-13), and
claim 13 claims the kit of claim 11 wherein one of the bodies “has
a different size and shape” of another of the bodies (9:14-16).
DePuy argues that the terms “size” and “shape” should simply be
given their ordinary and accustomed meanings. Zimmer, on the other
hand, argues that “different shape” is indefinite under 35 U.S.C.
§ 112 4 2, rendering claims 11-13 invalid, and moves for summary
judgment accordingly.

35 U.S.C. § 112 @@ 2 states that patent claims must
“particularly point[] out and distinctly claim[] the subject matter
which the applicant regards as his invention.” The standard for
determining whether a patent claim is sufficiently definite to
satisfy this statutory requirement is whether “one skilled in the
art would understand the bounds of the claim when read in light of
the specification.” Exxon Research & Eng’g Co. v. United States,
265 F.3d 1371, 1375 (Fed. Cir. 2001). In other words, the standard
is “whether the claims at issue are sufficiently precise to permit
a potential competitor to determine whether or not he is
infringing.” Id. (internal quotation omitted). Determination of
claim indefiniteness is a question of law drawn from my duty as
construer of patent claims. Id. at 1376.

While DePuy asks me to look at the terms “size” and “shape,”
and Zimmer asks me to examine the meaning of “different shape,” the

only way to proceed is to determine whether, in their entirety, the

19



portions of the femur. Thus, neither the specification nor the
prosecution history presents any reason to limit to small portions
of the femur the plain language of the claim covering replacement
of “adjacent portions of a bone.”

III. “Means for Fixedly Attaching”

Claim 1 claims the “means for fixedly attaching one of the at
least two head members to one of the at least two bodies.” (8:38-
39.) A patent may claim a means for performing a specified
function without expressly claiming a structure for performing that
function. 35 U.S.C. § 112 { 6. See also Chiuminatta Concrete
Concepts, Inc. v. Cardinal Indus., Inc., 145 F.3d 1303, 1307 (Fed.
Cir. 1998) (“A means-plus-function limitation contemplated by 35
U.S.C. § 112, 41 6 recites a function to be performed rather than
definite structure or materials for performing that function.”).
In such a case, the claim shall be construed to cover the structure
described in the specification for performing the claimed function
and any equivalent structures. Id.

Before analyzing what appears to be a section 112 paragraph 6
means-plus-function limitation of a claim, I must assure myself
that such a limitation is at issue. Kemco Sales, Inc. v. Control
Papers Co., 208 F.3d 1352, 1361 (Fed. Cir. 2000). The fact that
both parties agree that the “means for fixedly attaching” element
of claim 1 is a means-plus-function limitation does not relieve me

of the responsibility to determine for myself that the element

13


the patent specification serves to point away from improper
Meanings and toward the proper meaning. Renishaw PLC v. Marposs
Societa’ Per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998). Here,
the specification points to the basic definition of “kit” as “a set
of parts to be assembled.” For example, the specification
describes the kit as consisting of stem members, body members and
head members that are “separate components ... adapted to be
assembled together to form a custom prosthesis.” (3:8-13.) The
specification repeatedly refers to the assembly of a prosthesis
from the parts in the kit, but fails to mention a common container
for the parts. Even when specifically describing the “kit concept”
and the “kit form,” the patent explains only that the benefits of
such a concept or form include a reduction in the inventory
required to be maintained by a hospital and increased flexibility
by providing for assembly of a prosthesis that may otherwise be
unavailable. (3:50-55.) There is no indication that the kit
concept or kit form includes a common container. Because the term
“kit” in the claim has more than one ordinary meaning, but the
specification points only to the ordinary meaning of “a set of
parts to be assembled,” that is how I construe the claim. The
parts are not required to be collected in a common container.
II. “Bone”
Claim 1 uses the term “bone” several times. DePuy argues that

the term should be construed to mean “hip bone” or “femur,” while


claims containing the “different size and shape” language can be
construed. If a claim is insolubly ambiguous such that no
narrowing construction can properly be adopted, the claim is
statutorily indefinite. Id. at 1375. If, however, the meaning of
a claim is discernible, “even though the task may be formidable and
the conclusion may be one over which reasonable persons will
disagree,” the claim is sufficiently clear to avoid invalidity on
indefiniteness grounds. Id.

The phrase “different size and shape” is susceptible to two
distinct meanings. The first reads “different size and shape” as
meaning “different size and different shape,” and thus objects that
are the same shape but different sizes or objects that are the same
size but different shapes are not of “different size and shape.”
The other way to read the phrase “different size and shape” is to
read it as meaning “not the same size and shape,” that is, as the
opposite of “same size and shape.” Under this reading, if two
objects do not have both the same size and the same shape as one
another, they are of “different size and shape.” Reading the
specification, it becomes clear that this second reading is the
proper interpretation of the claim. The specification indicates
that the purpose of a kit containing components of various shapes
and sizes is to provide a wide variety of options in creating a
prosthesis to fit an individual patient. (3:46-50.) This purpose

is satisfied so long as each of the various types of components are

20



integral with the head, and the term “different size and shape”
requires only that there are two of each type of piece that do not
have the same size and shape. Further, because the claims are not
invalid as indefinite, defendant’s motion for summary judgment is

DENIED.

ENTER ORDER:

Ls 2 Gash

Elaine E. Bucklo
United States District Judge

Dated: August 11, 2003

22



the ball is screwed onto the transition part. The patent indicates
that in this prior art, then, “the neck is a part of the transition
part.” (2:45.) DePuy argues that this description of the prior
art discloses a structure in which the neck is integral with the
body.

A specification’s description of prior art may sufficiently
disclose a structure corresponding to a claimed function in a
means~plus-function limitation. See Clearstream Wastewater Sys. v.
Hydro-Action, Inc., 206 F.3d 1440, 1445-46 (Fed. Cir. 2000). The
fact that the disclosed structure is prior art and not novel does
not imply that it may not be a corresponding structure. See id.
However, the specification must “clearly link[] or associate[]” the
disclosed structure to the function recited in the claim in order
for the structure to correspond to a claimed function in a means-
plus-function limtation. B. Braun Med., Inc. v. Abbott Labs., 124
F.3d 1419, 1424 (Fed. Cir. 1997). This duty to clearly link or
associate structure to function is the quid pro quo for the
convenience of employing a section 112 paragraph 6 means-plus-—
function limitation. Id. Here, the function recited in the claim
is the attachment of a head member to a body member. The prior art
structure described in the patent, however, does not contain a body
member. It contains an anchoring part and a transition part, but
nothing called a body. DePuy asserts that what the prior art calls

a transition part is the same thing as a body. Whether or not that

17



including shoulder joint prostheses.

Zimmer also argues that the prosecution history indicates that
the patentees did not intend to limit claim 1 to hip prostheses.
cf. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.
Cir. 1996) (“[T]he court may [in the course of claim construction]
consider the prosecution history of the patent, if in evidence.”).
Claim 1 of the ‘706 patent comes from claim 18 of the ‘706 patent
application. (DePuy Ex. 3 at DPY018095-96.) Claim 18 of the ‘706
patent application came from claim 20 of patent application serial
number 07/793,860. (DePuy Ex. 3 at DPY018099.) Patent application
serial number 07/793,860 was originally entitled “Modular Humeral
Prosthesis,” and claim 20 of that application was described as “not
being limited to a shoulder prosthesis.” (Zimmer Ex. K.) Thus,
argues Zimmer, the claim that ultimately became claim 1 of the ‘706
patent began as a claim broadly covering both shoulder and hip
prostheses. All this history indicates, however, is that the
language of claim 1 of the ‘706 patent is, on its face, broad
enough to cover both shoulders and hips. The fact that the claim
started out as a claim in a humeral prosthesis patent application
does not mean that when the claim language was transferred to a
patent describing only a hip prosthesis that it retained its
coverage of shoulder prostheses. As discussed above, although the
language of the claim could cover any ball~and-socket joint

generally, reading the claim in light of the specification


And “while it is true that claims are to be interpreted in light of
the specification and with a view to ascertaining the invention, it
does not follow that limitations from the specification may be read
into the claims.” Sjolund v. Musland, 847 F.2d 1573, 1581 (Fed.
Cir. 1988) .3

There is, however, a fine line between reading a claim in
light of the specification, and reading a limitation into the claim
from the specification, Comark Communications, Inc. v. Harris
Corp., 156 F.3d 1182, 1186-87 (Fed. Cir. 1998), and ultimately “[a]
claim construction is persuasive, not because it follows a certain
rule, but because it defines terms in the context of the whole
patent,” Renishaw, 158 F.3d at 1250. Thus, “[t]he construction
that stays true to the claim language and most naturally aligns
with the patent’s description of the invention will be, in the end,
the correct construction.” Id. Here, that construction is one
that reads “bone joint prosthesis” as “hip joint prosthesis,” and
the repeated references to “bone” as references to “the femur.”

The specification clearly indicates that the patentees meant “hip

3 Sjolund goes on to explain the justification for this rule:

If everything in the specification were required to be read
into the claims, or if structural claims were to be limited to
devices operated precisely as a _ specification-described
embodiment is operated, there would be no need for claims.
Nor could an applicant, regardless of the prior art, claim
more broadly than that embodiment. Nor would a basis remain
for the statutory necessity that an applicant conclude his
specification with “claims particularly pointing out and
distinctly claiming the subject matter which the applicant
regards as his invention.”
847 F.2d at 1582 (quoting 35 U.S.C. § 112).

6


Zimmer argues that the term should not be so limited and should
include shoulder and arm bones. Thus, for example, DePuy argues
that the claim, which calls for “[a] kit for the assembly of a
modular bone joint prosthesis,” should be read as a kit for the
assembly of a hip joint prosthesis, and that references in the
claim to pieces sized for insertion into or replacement of a
portion of the bone should be read as pieces sized for insertion
into or replacement of a portion of the patient’s femur.

Clearly the ordinary and accustomed meaning of the term “bone”
is not limited to hip bones and femurs. DePuy argues, however,
that the specification leaves no doubt that the claimed invention
is limited to hip replacements. Indeed, the patent is titled
“Modular Hip Prosthesis,” (1:2), and begins by reciting:

The present invention relates to prosthesis for replacement of

a portion of the hip joint. More particularly, the present

invention relates to a modular prosthesis for replacement of

the upper portion of the femur.
(1:13-16.) The specification goes on to describe the current state
of conventional hip prostheses and some of the problems associated
with them (1:17-60), and then explains that “{the] object of the
present invention is to provide a modular hip prosthesis” that
addresses these various problems (2:50-64). It is clear that the
specification is describing a hip prosthesis in particular, as
opposed to any ball-and-socket-type prosthesis in general. The
claim construction inquiry, however, “begins and ends in all cases

with the actual words of the claim.” Renishaw, 158 F.3d at 1248.

5


is true, the patent’s discussion of the prior art does not clearly
link or associate the structure described by the prior art (in
which the neck is integral with the transition part) to the
function of attaching a head member to a body member. See
Medtronic, Inc. v. Advanced Cardiovascular Sys., Inc., 248 F.3d
1303, 1312 (Fed. Cir. 2001) (holding that even if a disclosed
structure is definitely capable of performing the recited function,
absent a clear link or association under Braun, the structure is
not claimed as a corresponding means). Thus, the prior art
structure described is not a structure corresponding to the means-
plus-function limitation. The specification discloses only two
types of structures for fixedly attaching a head to a body, one in
which a neck piece is separate from both the head and body, and
another in which the neck piece is separate from the body but
integral with the head.’
IV. “Different Size and Shape”

Claim 11 claims the kit of claim 1 wherein one of the stems

“has a different size and shape” as another of the stems (9:8-10),

claim 12 claims the kit of claim 1 wherein one of the bodies “has

7 The fact that I do not find any corresponding structure in
the patent in which the neck piece is integral with the body piece
does not necessarily mean that such a structure cannot be
equivalent to the structures I find corresponding to the recited
function. A means-plus-function limitation claims corresponding
structures described in the specification “and equivalents
thereof.” 35 U.S.C. § 112 @ 6. Section 112 paragraph 6
equivalency is a question of fact. Odetics, Inc. v. Storage Tech.
Corp., 185 F.3d 1259, 1268-69 (Fed. Cir. 1999).

18


of a femur.” (9:29-31) (emphasis added). Thus, argues Zimmer,
when the patentees wished to limit a claim to hip prostheses, they
explicitly did so. The doctrine of claim differentiation states:
There is presumed to be a difference in meaning and scope when
different words or phrases are used in separate claims. To
the extent that the absence of such difference in meaning and
scope would make a claim superfluous, the doctrine of claim
differentiation states the presumption that the difference
between the claims is significant.
Comark Communications, 156 F.3d at 1187. There is thus a
presumption that the terms “bone joint prosthesis” and “bone” in
claim 1 have a separate meaning and scope from the terms “hip
prosthesis” and “femur” in claim 18. However, the doctrine of
claim differentiation applies only if giving the terms in claim 1
the same meaning and scope as the terms in claim 18 renders one of
the claims superfluous. That is not the case here. Claim 18
describes a kit containing stems with a lower portion and an upper
portion and bodies that are placed over the upper portion of the
stem. (9:29-41.) Claim 1, on the other hand, describes a kit
containing stems and bodies “to be joined in fixed attachment.”
(8:27-35.) Claim 1 does not describe the stems as containing upper
and lower portions and does not describe the bodies as being placed
over the upper portion of the stem. Reading “bone joint
prosthesis” and “bone” in claim 1 as having the same scope and
meaning as “hip prosthesis” and “femur” in claim 18 does not render

either claim superfluous, and the doctrine of claim differentiation

therefore does not apply to require a broad reading of claim 1 as

8


.
Minute Order Form (06/97)

United States District Court, Northern District of Minois

Name of Assigned Judge i Sitting Judge if Other
or Magistrate Judge Elaine E. Bucklo than Assigned Judge
CASE NUMBER 02 C 4023 DATE 8/11/2003
CASE Depuy, Inc. vs. Zimmer Holdings, et al.
TITLE
[In the following box (a) indicate the party filing the motion, .g., plaintiff, defendant, 3rd party plaintiff, and (b) state briefly the nature
MOTION: of the motion being presented.]
DOCKET ENTRY:
(@3) oO Filed motion of [ use listing in “Motion” box above.]
Q) a Brief in support of motion due
@) oO Answer brief to motion due . Reply to answer brief due.
(4) o Ruling/Hearing on set for at :
(5) a Status hearing set for 9/26/03 at 10:15 A.M..
(6) Qa Pretrial conference[held/continued to] [set for/re-set for] on set for at :
(e) im] Trial[set for/re-set for] on at
(8) Oo [Bench/Jury trial] [Hearing] held/continued to at
(9) oOo This case is dismissed [with/without] prejudice and without costs[by/agreement/pursuant to}
CIFRCP4(m) ClLocal Rule 41.1 CIFRCP41(a)(1) 0 FRCP41(a)(2).
qo [Other docket entry} | Enter Memorandum Opinion and Order denying defendant’s motion for
summary judgment (61-1)

al) 5 [For further detail see order attached to the original minute order.]

No notices required, advised in open court.

6

No notices required. umber of notices

wv | Notices mailed by judge’s staff.
i hug 12 2003
Notified counsel by telephone. Mise docketes

Docketing to mail notices.

Mail AO 450 form.

Copy to judge/magistrate judge. gruisia’s'A
py to judge/magistrate judge. und tua
MPI fut ag:3 Wd | \ on €0
initials 2 _—_
Sule oat nailing deputy initials



replacing only a small portion of the femur, but it is well
established that patent drawings may not be relied upon to show
particular sizes if the specification is completely silent on the
issue. Hockerson-Halberstadt, Inc. v. Avia Group Int’l Inc., 222
F.3d 951, 956 (Fed. Cir. 2000) (rejecting an argument based on a
patent drawing regarding the width of a groove in an athletic shoe
heel). Thus, the fact that two drawings in the patent show only a
small femur portion being replaced by the device in no way
establishes a limitation on the size of the femur portion that can
be replaced.

DePuy also points to the patent history to support its
argument that there exists a limitation on the size of the femur
portion that can be replaced. As part of the application process,
the patentees submitted an information disclosure statement
discussing prior art. (DePuy Ex. 2 at DPY019130-36.) In the
disclosure statement, the patentees described prior art in which
“[t]he prosthesis ... is designed to replace the entire upper
portion of the femur, and not to be implanted within the femur.”
(Id. at DPY019133.) DePuy argues that this statement distinguished
the prostheses claimed in the ‘706 patent from prior art prostheses
that replaced large portions of the femur, and thus limited the
‘706 patent claims to prostheses replacing only small portions of
the femur. Statements made in an information disclosure statement

can be used to interpret the scope of patent claims. Ekchian v.

11


indicates that as used in the ‘706 patent, claim 1 covers only hip
prostheses.

A related dispute between the parties is whether, given that
the prosthesis is limited to the hip joint and femur, the
prosthesis is limited to use in only certain types of surgeries.
DePuy argues that claim 1, which claims a prosthesis to replace a
head, neck, “and adjacent portions of a bone” should be read as
limiting the use of the prosthesis to surgeries in which only a
small portion of the femur adjacent to the head and neck is
removed, DePuy contrasts hip replacements typically used in
arthritis cases, in which only a small portion of the femur is
removed, with hip replacements typically used in oncological
applications, in which a much larger portion of the femur is
removed. Zimmer, on the other hand, argues that the claim language
does not support a limitation to any particular kind of surgery or
amount of femur removed.

The plain meaning of the term “adjacent portions” cannot
seriously be disputed. “Adjacent” means “next to” and “portion”
means “a part of a whole.” Thus, claim 1 calls for a prosthesis
for the replacement of a head, neck, and parts of the femur next to
the head and neck. There is no explicit limitation in the claim as
to the size of the portion of the femur to be replaced. Nor is
there anything in the specification indicating such a limitation.

DePuy points to two figures in the specification showing the device

10


joint prosthesis” and “femur” in the claim, and by looking to the
specification for this purpose, I am not importing an extraneous
limitation into the claim. See E.I. du Pont de Nemours & Co. v.
Phillips Petroleum Co., 849 F.2d 1430, 1433 (Fed. Cir. 1988) (“It
is entirely proper to use the specification to interpret what the
patentee meant by a word or phrase in the claim... [b]ut this is
not to be confused with adding an extraneous limitation appearing
in the specification, which is improper.”).‘ See also Corning
Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1256-57
(Fed. Cir. 1989) (reading a patent claim as limited to having
properties set out in the specification because the specification
“makes clear that the inventors were working on the particular
problem of an effective optical communication system not on general
improvements in conventional optical fibers [and thus, to] read the
claim in light of the specification indiscriminately to cover all
types of optical fibers would be divorced from reality.”) (citing
du Pont).

Zimmer makes two arguments why the claims should not be
limited to hip joint prostheses. First, in claim 18, which is not
at issue here, the patent claims “[a] kit for the assembly of a hip

prosthesis for replacement of a head, neck, and adjacent portions

4 The court in du Pont defined “extraneous limitation” as “a
limitation read into a claim from the specification wholly apart
from any need to interpret what the patentee meant by particular
words or phrases in the claim.” 849 F.2d at 1433.


not identical to one another. For example, a kit containing two
heads of the same size and shape, two bodies of the same size and
shape, and two stems of the same size and shape would not provide
the flexibility described in the specification. It is immaterial,
however, whether the two heads, two bodies, and two stems have only
different sizes, only different shapes, or both. If the kit
contained, for example, two different shaped bodies of roughly the
same size, the described flexibility would still be present.
Likewise, if the kit contained two bodies of the same shape in two
different sizes, the described flexibility would be present. Thus,
the specification points toward the proper interpretation of
“different size and shape” as meaning “not the same size and
shape.” Further, because the proper meaning of “different size and
shape” has thus been discerned, the claims are not invalid on
indefiniteness grounds. See Exxon Research & Eng’g Co., 265 F.3d
at 1375.
V. Conclusion

The disputed claim terms are construed as discussed above.
The kit does not require a common container, the prosthesis is
limited to replacements of hip joints, there is no limitation on
the size of the portion of femur to be replaced by the prosthesis,
the disclosed structures corresponding to the means for fixedly
attaching a head to a body include a neck piece separate from the

head and the body and a neck piece separate from the body but

21



claims as follows.
I. “Kit”

The first step in claim construction is to look at the
language of the claim itself. Bell Atlantic, 262 F.3d at 1267.
Claim terms are given their ordinary and accustomed meaning as
understood by one of ordinary skill in the art. Id. Dictionary
definitions may be examined to determine a claim term’s ordinary
meaning. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366
(Fed. Cir. 2002). Here, dictionary definitions support both
parties’ interpretations of the term “kit.” For example, “kit” can
be defined as “a set of parts to be assembled,” which does not
imply a container requirement, but it can also be defined as “a
packaged collection of related material.” Webster’s Ninth New
Collegiate Dictionary 663 (1991).‘ Zimmer points to a dictionary
defining “kit” as “a collection of equipment and often supplies
typically carried in a box or bag.” Webster’s Third New
International Dictionary 1246 (1986). While DePuy correctly notes
that the term “typically” in that definition means that a box or
bag is not required to turn a collection into a kit, it also
implies that the ordinary and accustomed meaning--the way the term
is typically used--includes a common container. Thus, reference to
dictionary definitions here is inconclusive as to the ordinary
meaning of the term “kit.”

When there is more than one ordinary meaning for a claim term,


invokes section 112 paragraph 6. Rodime PLC v. Seagate Tech.,
Inc., 174 F.3d 1294, 1302 (Fed. Cir. 1999).5 In determining
whether a claim element is a means-plus-function limitation, I
apply a presumption that patentees using the word “means” intended
to invoke section 112 paragraph 6. Id. at 1302. This presumption
is overcome in two instances. First, a claim that uses the word
“means” but does not state any corresponding function is not a
means~plus-function limitation. Second, a claim that uses the word
“means” and states a corresponding function, but goes on to recite
sufficient structure or material for performing that function is
also not a means-plus~function limitation. Id. Here, the “means
for fixedly attaching [a head member to a body member]” element
invokes the term “means,” states a corresponding function--“for
fixedly attaching [a head member to a body member],” and does not
go on to recite any structure for doing so. (8:38-39.) This claim
element is therefore a means-plus-function limitation invoking
section 112 paragraph 6. See Altiris, Inc. v. Symantec Corp., 318
F.3d 1363, 1375-76 (Fed. Cir. 2003) (reading “means of booting said
digital computer” as a means-plus-function limitation) .

Having determined that a means-plus~function limitation is at

5 But see Asyst Techs., Inc. v. Empak, Inc., 268 F.3d 1364,
1369 (Fed. Cir. 2001) (failing to inquire into whether claim
elements were mean~plus-function limitations, finding no reason to
depart from the parties’ and district court’s consistent position
that they were means-plus-function limitations, despite potential
reason for doing so).

14


The threaded end is secured to the body, while the tapered end
receives the head. (7:13-21.) Figure 7c shows a slight variation
on the separate neck in figure 7, in which the neck is attached to
both the head and body through tapered ends, as opposed to one
tapered end, one threaded end. (7:43-48.) Another disclosed
structure is a neck piece that is integral with the head. Figure
1 shows a neck member that is attached to the body by a threaded
end but has the head already formed on the other end. (5:10-17.)
The head is attached to the body by simply screwing the head/neck
piece into the body and tightening with a wrench. (5:21-33.) The
specification thus clearly discloses two structures for fixedly
attaching a head to a body: a neck piece separate from both the
head and body, and a neck piece separate from the body but integral
with the head.®

DePuy argues that the patent discloses an additional
structure, namely a neck piece separate from the head but integral
with the body. The patent describes prior art that disclosed a
prosthesis composed of “an anchoring part,” “a transition part,”
and a ball. {2:29-49.) The anchoring part is inserted in the

femur, the transition part is coupled to the anchoring part, and

6 These disclosed structures also include various options for
collars and clips that may be inserted between the neck and body.
See, e.g., (7:24-28) (“A collar clip is shown that inserts under
the projection of the collar to lock the neck member in position
after it has been screwed into the threaded hole in the body
member.”) (drawing numbers omitted). These parts of the structure
are not at issue here.

16



portion of the bone, and with each body configured
to be joined in fixed attachment to one of the at
least two stems,

at least two head members, with each head member sized
to replace a head portion of the bone, and

means for fixedly attaching one of the at least two head
members to one of the at least two bodies.

11. The Kit of claim 1, wherein one of the at least two stems

has a different size and shape as another of the at least two

stems.

12. The Kit of claim 1, wherein one of the at least two

bodies has a different size and shape as another of the at

least two bodies.

13. The Kit of claim 11, wherein one of the at least two

bodies has a different size and shape as another of the at

least two bodies.
(8:26-39, 9:8-16.)? The meaning of several of these terms is
disputed by the parties. First, the parties dispute whether “kit”
means simply a collection of parts, or whether it means a
collection of parts collected together in a common container.
Second, the parties dispute whether the references to “bone” in the
claims are limited to femurs and hip bones, and also whether the
reference to replacement of “adjacent portions of bone” refers only
to a small portion of the bone. Third, the parties dispute whether
the “means for fixedly attaching” a head to a body requires use of
a separate neck piece. Finally, the parties differ as to whether
the phrase “different size and shape” can even be interpreted, with
Zimmer moving for summary judgment on the ground that the claims

are invalid as indefinite under 35 U.S.C. § 112 @ 2. I deny

Zimmer’s motion for summary judgment and construe the relevant

2 Citations to the patent are in the form (Column:Lines) .

2


IN THE UNITED STATES DISTRICT COURT ment
FOR THE NORTHERN DISTRICT oF 1uuinoris Gi:
EASTERN DIVISION
AUG 12 2003

DEPUY, INC.,
Plaintiff,
Vv.

No. 02 C 4023
ZIMMER HOLDINGS, INC., and ZIMMER,

INC.,
Defendants.
MEMORANDUM OPINION AND ORDER
Plaintiff DePuy, Inc. (“DePuy”) sued defendants Zimmer

Holdings, Inc. and Zimmer, Inc. (collectively “Zimmer”) for patent
infringement. DePuy alleges that Zimmer is infringing claims 11-13
of its patent entitled “Modular Hip Prosthesis” (“‘706 Patent”).
The determination of infringement is a two-step process. First, I
construe the claims in the patent to determine their scope. Then,
the allegedly infringing device is compared to the claims as
construed. Bell Atlantic Network Servs., Inc. v. Covad
Communications Group, Inc., 262 F.3d 1258, 1267 (Fed. Cir. 2001).
Claim construction is an issue of law. Id.

The relevant claims! in the ‘706 Patent are as follows:

1. A kit for the assembly of a modular bone joint prosthesis

for the replacement of a head, neck, and adjacent portions of

a bone, the kit comprising

at least two stems, with each stem sized for insertion

into a cavity of the bone,
at least two bodies, with each body sized to replace a

1 Although only infringement of claims 11-13 is alleged,

claims 11-13 are dependent on claim 1.


Home Depot, Inc., 104 F.3d 1299, 1303-04 (Fed. Cir. 1997).
However, “[{u]nless altering claim language to escape an examiner
rejection, a patent applicant only limits claims during prosecution
by clearly disavowing claim coverage.” York Prods., Inc. v. Cent.
Tractor Farm & Family Ctr., 99 F.3d 1568, 1575 (Fed. Cir. 1996).
Here, the disclosure statement simply described prior art in which
the prosthesis replaces the entire upper portion of the femur and
contrasts that to simply implanting the prosthesis within the
femur. It does not “clearly disavow[]” claim coverage over
prostheses otherwise covered that replace the entire upper portion
of the femur.

DePuy points to one other element of the prosecution history
to support its argument that there exists a limitation in the claim
on the size of the femur portion that may be replaced by the
prosthesis. The claim was at one time rejected as clearly
anticipated by another patent (“Harder”). In requesting
reconsideration of the rejection, the patentees distinguished
Harder by arguing, among other things, that unlike the prior
patent, the current claim “require[s] selection of a stem from
different sized and shaped stems and having a portion for reception
into the femur.” This language pointed to by DePuy says nothing
about how large a portion of the femur may be replaced by the
claimed prosthesis and therefore does not “clearly disavow[]” claim

coverage over prostheses otherwise covered that replace large

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issue, I must now construe the function recited in the claim, and
determine what structures have been disclosed in the specification
that correspond to the means for performing that function. Kemco
Sales, 208 F.3d at 1361. The function recited in the claim is
straightforward and not disputed by the parties. It is simply to
fixedly attach a head member to a body member. See Micro Chem.,
Inc. v. Great Plains Chem. Co., 194 F.3d 1250, 1258 (Fed. Cir.
1999) (“[Section 112 paragraph 6] does not permit limitation of a
means-plus-function claim by adopting a function different from
that explicitly recited in the claim.”). The nature of the
corresponding structure disclosed in the specification, however, is
an issue disputed by the parties.

DePuy argues that the corresponding structure is a neck that
connects the head to the body, and that the neck may be integral
with the body, integral with the head, or separate from and
attachable to both. Zimmer, on the other hand, argues that the
neck connecting the head and body must be an individual piece
separate from both the head and body. A means-plus-function
limitation covers all structures disclosed in the specification
that correspond to the claimed function. Ishida Co. v. faylor,
221 F.3d 1310, 1316 (Fed. Cir. 2000). One corresponding structure
disclosed in the specification is a neck piece that is separate
from the head and body. Figure 7 of the ‘706 patent shows a

separate neck piece containing a threaded end and a tapered end.

15