United States Court of Appeals 

for the Federal Circuit ______________________ 

SYNTHES USA, LLC (formerly known as Synthes 

(U.S.A.)) AND DEPUY SYNTHES PRODUCTS, LLC,

Plaintiffs-Appellants,

v.

SPINAL KINETICS, INC.,

Defendant-Cross Appellant.

______________________ 

2013-1047, -1059

______________________ 

Appeals from the United States District Court for the 

Northern District of California in No. 09-CV-1201, Senior 

Judge Ronald M. Whyte.

______________________ 

Decided: October 29, 2013

______________________ 

JEFFREY M. OLSON, Sidley Austin, LLP, of Los Angeles, California, argued for plaintiffs-appellants. With him 

on the brief was MATTHEW S. JORGENSON. Of counsel on 

the brief was CONSTANTINE L. TRELA, JR., of Chicago, 

Illinois. 

ROBERT W. DICKERSON, Dickstein Shapiro, LLP, of Irvine, California, argued for defendant-cross appellant. 

With him on the brief were ALLAN W. JANSEN, CHARLES A.

KERTELL, EHAB M. SAMUEL and MARK A. STIRRAT. Of 
2 SYNTHES USA, LLC v. SPINAL KINETICS, INC. 

counsel was JAMES W. GERIAK, Sheppard Mullin Richter 

& Hampton, LLP, of Costa Mesa, California. 

______________________ 

Before PROST, O’MALLEY, and TARANTO, Circuit Judges.

Opinion for the court filed by Circuit Judge O’MALLEY. 

Dissenting opinion filed by Circuit Judge TARANTO. 

O’MALLEY, Circuit Judge.

Synthes USA, LLC and DePuy Synthes Products, LLC

(collectively, “Synthes”)1 appeal from a jury verdict finding that Spinal Kinetics, Inc. (“SK”) did not infringe 

claims 29–31 (“asserted claims”) of U.S. Patent No. 

7,429,270 (“the ’270 patent”) and that the claims were 

invalid for lack of written description. SK cross-appeals 

contending that the district court erred in denying SK’s 

motion for fees under 35 U.S.C. § 285. Both appeals are

timely, and we have jurisdiction under 28 U.S.C. 

§ 1295(a)(1). For the reasons below, we affirm the jury 

verdict of invalidity for lack of written description and 

affirm the district court’s denial of SK’s request for attorneys’ fees. 

1 During the pendency of the district court proceedings through final judgment and at the time the present 

appeal was docketed, the patent-in-suit was assigned to 

Synthes. After briefing on this appeal was completed but 

before oral argument, the patent-in-suit was assigned to 

DePuy Synthes Products, LLC (“DePuy”). To reflect that 

change, DePuy was added as an appellant in this case and 

the caption was modified to reflect that addition. See 

Synthes USA, LLC v. Spinal Kinetics, 13-1047, ECF No. 

48 (Fed. Cir. July 3, 2013).

 
SYNTHES USA, LLC v. SPINAL KINETICS, INC. 3

I. BACKGROUND

A. The ’270 Patent and Accused Devices

Synthes filed this action alleging that SK’s M6-C and 

M6-L intervertebral implants infringed claims 29–31 of 

the ’270 patent. See Synthes (USA) v. Spinal Kinetics, 

Inc., 5:09-cv-1201-RMW, ECF No. 1 (N.D. Cal. Nov. 12, 

2008). The ’270 patent originated from a German language PCT application filed on April 14, 2003. The asserted claims were added by amendment on February 19, 

2008. The ’270 patent is directed to an “Intervertebral 

Implant,” which is a prosthetic device designed to replace 

a diseased or degenerated disc located between adjacent 

vertebrae of the human spine:

A healthy disc (depicted below) has a fibrous, outer band 

called the annulus fibrosus, which surrounds a central, 

gel-like substance called the nucleus pulposus:
4 SYNTHES USA, LLC v. SPINAL KINETICS, INC. 

A natural disc provides shock-absorbing functions and 

helps maintain proper spacing, stability, and motion 

within the spine. Artificial discs attempt to replace some 

or all of these functions. Claim 29, the independent claim 

from which claims 30 and 31 depend, provides: 

29. An intervertebral implant for implantation between an upper and lower vertebrae, the implant 

having a central axis, the implant comprising: 

a first substantially rigid bone contacting plate 

having an external surface extending generally 

transversely to the central axis for contacting at 

least a portion of the upper vertebra; 

a second substantially rigid bone contacting plate 

having an external surface extending generally 

transversely to the central axis for contacting at 

least a portion of the lower vertebra; 

a third plate operatively coupled to the first bone 

contacting plate, the third plate including a plurality of openings; 

a fourth plate operatively coupled to the second 

bone contacting plate, the fourth plate including a 

plurality of openings; 
SYNTHES USA, LLC v. SPINAL KINETICS, INC. 5

a central part substantially located between the 

third and fourth plates, the central part including 

a flexible core and a fiber system, wherein the 

core is substantially cylindrical and includes a top 

surface and a bottom surface, the top surface of 

the core being in contact with the third plate and 

the bottom surface of the core being in contact 

with the fourth plate, and wherein the fiber system at least partially surrounds the core, and is at 

least partially received within the plurality of 

openings formed in the third and fourth plates so 

that the fiber system is joined to the third and 

fourth plates; and 

an elastic sheathing body at least partially surrounding the fiber system and the core, and connected to the third and fourth plates.

’270 patent, col. 8, ll. 19–48. 

Claim 30 requires that the first and second bone contacting plates recited in claim 29 be made from titanium 

or titanium alloy. Id. at col. 8, ll. 49–51. Claim 31 requires the fiber system recited in claim 29 to be constructed of an “ultra high molecular weight polyethylene 

material.” Id. at col. 8, ll. 52–54. According to Synthes, 

claims 30 and 31 stand or fall with claim 29. The main 

features of claim 29 are depicted in Figures 3 and 4 of 

the ’270 patent:

SYNTHES USA, LLC v. SPINAL KINETICS, INC. 7

Except for the shape of the cores, the M6-C and M6-L are 

identical for purposes of this litigation.

B. Proceedings Below 

During the course of the litigation, the district court 

construed a number of terms contained in claim 29 of 

the ’270 patent. Of particular relevance to the current 

appeal is the court’s construction of the phrase “the third 

plate including a plurality of openings.”2 Synthes, ECF 

No. 84 (N.D. Cal. June 23, 2010). SK argued that “plurality of openings” should be limited to grooves on the circumference of the claimed cover plates. Id. SK’s 

argument was predicated on its contention that the 

written description of the ’270 patent does not describe a 

structure with holes or slots in the cover plates, but only 

describes grooves on the circumference of the cover plate 

that radially penetrate into the lateral surface of the 

plate. Id. Those grooves are depicted as element 18 in 

Figure 2 of the ’270 patent:

2 Claim 29 recites that both the third and fourth plates 

include a “plurality of openings.” See ’270 patent, col. 8, 

ll. 19–48. The court’s claim construction of the phrase 

applied to both limitations, but for ease of reference we 

only recite the third plate. 

 
8 SYNTHES USA, LLC v. SPINAL KINETICS, INC. 

See ’270 patent, col. 5, ll. 11–13.

Synthes, on the other hand, contended that the claim 

was not so limited, and urged the court for a broader 

construction: “a third plate including two or more openings.” Id. While the district court did not adopt Synthes’ 

construction wholesale, it did side with Synthes regarding 

the breadth of the phrase and construed it as “the third

plate including two or more openings to allow the fiber 

system to be joined or anchored to that plate.” Id. The 

court concluded that claim 29 requires openings in the 

cover plates, or third and fourth plates, which make it 

possible for the claimed fiber system to be joined or anchored to the plates. Id.

The importance of the “plurality of openings” limitation to Synthes’ infringement case is evident when viewed 

in light of the accused devices. SK devices do not employ 
SYNTHES USA, LLC v. SPINAL KINETICS, INC. 9

peripheral grooves, but instead use slots, or openings, on 

the cover plates. The M6 lumbar device uses trapezoidal 

slots, while the cervical device uses elongated circle slots:

 

Joint Appendix (“J.A.”) at 24515; 24172. According to SK,

Synthes amended the application that led to the ’270 

patent during prosecution to add claims 29–31 only after 

the M6 devices were on the market and Synthes was 

advised that SK’s M6 devices were a significant improvement in the technology. See J.A. at 20676; 25947. 

After the court construed the disputed terms of the 

patent, it entertained motions for summary judgment. 

The district court granted Synthes’ motions dismissing 

SK’s enablement, indefiniteness, and utility defenses, but 

denied Synthes’ motion to dismiss SK’s written description and best mode defenses. See Synthes, ECF No. 298 

(N.D. Cal. Aug. 19, 2011). The parties proceeded to trial 

on the remaining issues. After hearing all of the evidence, 

followed by four days of deliberation, the jury concluded 

that SK’s M6 devices did not infringe the asserted claims 

of the ’270 patent and that SK proved by clear and convincing evidence that claim 29, and consequently claims 

30 and 31, were invalid for a lack of written description 

support. See Synthes, ECF No. 497 (N.D. Cal. Dec. 13, 

2011). 
10 SYNTHES USA, LLC v. SPINAL KINETICS, INC. 

Synthes then moved the district court for judgment as 

a matter of law (“JMOL”) or new trial as to literal infringement and invalidity, among other things. Id. SK 

moved for attorneys’ fees, among other things. Id. The 

district court denied Synthes’ motion for JMOL or new 

trial as to literal infringement, but granted-in-part Synthes’ motion regarding invalidity for lack of written 

description. See Synthes, ECF No. 577 (N.D. Cal. Sept. 

27, 2012). According to the district court, the jury found

the ’270 patent invalid for lack of written description on 

four claim limitations: (1) “plate including a plurality of 

openings”; (2) “wherein the core is substantially cylindrical”; (3) “flexible core”; and (4) “substantially rigid bone 

contacting plate.” Id. Synthes argued that SK failed to 

produce substantial evidence as to all four. Id. The 

district court agreed with Synthes that SK failed to carry 

its burden on “substantially cylindrical core” and “substantially rigid bone contacting plate.” Id. The court 

affirmed the jury verdict, however, on “plate including a 

plurality of openings” and “wherein the core is substantially cylindrical.” Id. The court also denied SK’s motion 

for attorneys’ fees under 35 U.S.C. § 285. Id. Synthes 

then filed this appeal and SK cross-appealed.

II. DISCUSSION

The district court found substantial evidence supported the jury verdict that the term “plate including a plurality of openings” lacked written description support, 

rendering the asserted claims invalid. The district court 

also concluded that SK failed to demonstrate that it was 

entitled to attorneys’ fees. We agree with the district 

court on both counts. Consequently, we find the remaining issues on appeal moot.

A. Legal Standard

We review the denial of JMOL or request for a new 

trial after a jury verdict under the same standard of 

review as the trial court. Lucent Techs., Inc. v. Gateway, 
SYNTHES USA, LLC v. SPINAL KINETICS, INC. 11

Inc., 580 F.3d 1301, 1309 (Fed. Cir. 2009) (citing Wechsler 

v. Macke Int’l Trade, Inc., 486 F.3d 1286, 1290 (Fed. Cir. 

2007)). The grant or denial of JMOL is a procedural issue 

not unique to patent law; therefore, we apply the law of 

the relevant regional circuit. Id. (citing Summit Tech., 

Inc. v. Nidek Co., 363 F.3d 1219, 1223 (Fed. Cir. 2004)). 

The Ninth Circuit reviews denial of JMOL de novo. First 

Nat’l Mortg. Co. v. Fed. Realty Inv. Trust, 631 F.3d 1058, 

1067 (9th Cir. 2011) (citing Lakeside-Scott v. Multnomah 

Cnty., 556 F.3d 797, 802 (9th Cir. 2009)). We must draw 

all reasonable inferences in favor of the jury’s verdict, and 

the evidence is viewed in the light most favorable to the 

non-moving party. Id. The jury’s “verdict will be upheld 

if it is supported by substantial evidence, ‘even if it is also 

possible to draw a contrary conclusion.’” Id. at 1067–68 

(quoting Pavao v. Pagay, 307 F.3d 915, 918 (9th Cir. 

2002)).

1. Written Description

The district court, at Synthes’ urging, broadly construed the phrase “third plate including a plurality of 

openings,” which appears in claim 29. The relevant 

claims, moreover, include broad language added during 

prosecution. Synthes amended the application that 

became the ’270 patent to add the concept of “openings” in 

claim 29 almost five years after the application was 

originally filed, and after SK’s M6 devices were already on 

the market. See J.A. at 20676; 25157–25179. The original disclosure claimed and disclosed a plurality of grooves 

and a plurality of channels, but did not describe “openings” generally. See id. While broadening claims during 

prosecution to capture a competitor’s products is not 

improper, the written description must support the 

broadened claims. See Liebel-Flarsheim Co. v. Medrad, 

Inc., 358 F.3d 898, 909 n.2 (Fed. Cir. 2004) (“[I]t is not 

improper for an applicant to broaden his claims during 

prosecution in order to encompass a competitor’s products, as long as the disclosure supports the broadened 
12 SYNTHES USA, LLC v. SPINAL KINETICS, INC. 

claims.”) (citing Kingsdown Med. Consultants, Ltd. v. 

Hollister, Inc., 863 F.2d 867, 874 (Fed. Cir. 1988)). After 

hearing the testimony of SK’s expert, Dr. Lee, and its 

research and development manager, Mr. Koske, indicating that the as-filed disclosure did not demonstrate possession of an intervertebral implant that employed any 

sort of openings anywhere on the cover plates, the jury 

determined that the ’270 patent was invalid under § 112, 

paragraph 1. As the district court did before us, we find 

that substantial evidence supports that conclusion. 

Section 112, paragraph one of Title 35 requires a patentee to provide a written description that allows a 

person of skill in the art to recognize that the patentee 

invented what is claimed.3 See Ariad Pharms., Inc. v. Eli 

Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc) 

(citing Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1562–

63 (Fed. Cir. 1991)). “[T]he test for sufficiency is whether 

the disclosure of the application relied upon reasonably 

conveys to those skilled in the art that the inventor ha[d]

possession of the claimed subject matter as of the filing 

date.” Id. Determination of whether a patent satisfies 

the written description requirement is a question of fact. 

Id. (citing Capon v. Eshar, 418 F.3d 1349, 1357–58 (Fed. 

Cir. 2005)). The “level of detail required to satisfy the 

written description requirement varies depending on the 

nature and scope of the claims and on the complexity and 

predictability of the relevant technology.” Id.

Synthes contends that the jury’s verdict of invalidity 

for a lack of adequate written description was not supported by substantial evidence. Synthes asserts that 

the ’270 patent’s written description does not limit the 

3 Congress recently changed the language and 

structure of 35 U.S.C. § 112. See Leahy-Smith America 

Invents Act, PUB. L. NO. 112-29. Those amendments 

made no changes of relevance to this appeal.

 
SYNTHES USA, LLC v. SPINAL KINETICS, INC. 13

claimed “plurality of openings” to peripheral grooves. 

Synthes next argues that the testimony and evidence 

presented by SK via its expert and fact witnesses regarding the “plurality of openings” limitation did not support 

the jury’s verdict. Synthes also disputes the district 

court’s post-trial conclusion that SK produced evidence 

demonstrating that the field of intervertebral implants 

was sufficiently unpredictable such that a disclosure of 

one species of openings would not be enough to claim the 

entire genus. We disagree on all counts.

The ’270 patent’s written description, filed on April 

14, 2003, discloses that the fiber system may be anchored 

by various means. See ’270 patent, col. 2, ll. 4–6. The 

written description then discloses a series of examples of 

how the fiber system may be anchored on the cover plates, 

i.e., third and fourth plates. All of these examples employ 

“grooves,” not slots or openings on the plates. See

e.g., ’270 patent, col. 3, ll. 22–26 (describing anchoring the 

fiber system “through grooves and over the external 

surfaces of the cover plates from one groove to another 

one”); id., col. 3, ll. 32–34 (anchoring the fiber system by 

using “a wedge-shaped construction of the grooves”); id., 

col. 3, ll. 36–41 (describing the cover plates as comprising 

“a lateral surface [with] grooves distributed on the circumference and radially penetrating into the lateral 

surfaces”); id., col. 5, ll. 10–14 (disclosing an embodiment 

wherein the cover plates have “grooves distributed on the 

circumference and radially protruding into the lateral 

surfaces”); id., col. 5, ll. 65–67 (describing an embodiment 

with the fiber system “anchored on the cover plates by 

means of grooves”). Claims 29–31 recite a “plurality of 

openings” used to “join” or “anchor” the fiber system to the 

cover plates, which Synthes contends supports any type of 

openings located anywhere on the plates. The written 

description, however, never discloses anything broader 

than using grooves to anchor the fiber system to the cover 

plates. 
14 SYNTHES USA, LLC v. SPINAL KINETICS, INC. 

The parties appear to agree that “grooves” are a species of “opening,” but do not agree that “grooves” constitute an adequate disclosure to claim all openings that 

may be used in the cover plates to anchor the fiber system. In other words, the jury was asked to determine 

whether the written description disclosure of “grooves” 

“reasonably convey[ed] to those skilled in the art that the 

inventor had possession of [an intervertebral implant that 

could utilize any sort of opening located anywhere on the 

cover plates to anchor the fiber system] as of the filing 

date.” Ariad, 598 F.3d at 1351. The jury did not believe 

so and, when all reasonable inferences are drawn in favor 

of the jury verdict, we must affirm that decision.

SK presented testimony regarding the plurality of 

openings limitation via its expert, Dr. Lee, and its research and development manager, Mr. Koske. Dr. Lee

testified, based on his experience in designing total disc 

replacements, that a person of ordinary skill in the art 

would not believe that Synthes had possession of an 

intervertebral implant utilizing openings located anywhere on the cover plates based on the disclosure of 

peripheral grooves in the written description. In particular, Dr. Lee testified that: (1) based on his reading of the 

written description, the disclosure of peripheral grooves 

would not disclose openings located anywhere on the 

plates (see J.A. 20843–54, Tr. Transcript, Jan. 20, 2011 at 

2453:24–2455:7); (2) there are significant biomechanical 

property differences between using peripheral grooves 

and interior slots (see id. at 2456:11–20); and (3) when the 

fiber system is attached via peripheral grooves, the distance of the fibers to the central axis is limited, but when 

openings are used anywhere on the cover plates, the 

fibers are not so limited in proximity to the central axis of 

the device (see id. at 2456:21–2458:10). 

Mr. Koske buttressed Dr. Lee’s testimony that, based 

on his direct experience developing the accused products, 

the process of moving from peripheral grooves to internal 
SYNTHES USA, LLC v. SPINAL KINETICS, INC. 15

slots is not a simple substitution, but a careful and timeconsuming task. Mr. Koske, for example, testified that 

SK rejected early prototypes that used peripheral grooves 

on the cover plates. See J.A. 20757–58, Tr. Transcript, 

Nov. 20, 2011, 2076:21–2078:20. Mr. Koske was presented with a photograph of various SK devices, which he 

described as a “design time line” of M6 devices. See J.A. 

20757, Tr. Transcript, Nov. 20, 2011, 2075:16–24; J.A. 

27122 (DX1106). Mr. Koske then testified that the “early 

prototypes” with peripheral grooves were repeatedly 

rejected. See 20757–78, Tr. Transcript, Nov. 20, 2011, 

2077:11–2081:3. Mr. Koske’s testimony and attendant 

trial exhibits demonstrated that SK’s development process from the peripheral grooves to the commercial products took months of work. See, e.g., J.A. 24054–56 (SK 

meeting minutes from September 2003 describing M6 

devices in development process); J.A. 24122–42 (SK 

presentation from December 2003 illustrating design 

history of the M6 devices); J.A. 20758, Tr. Transcript, 

Nov. 20, 2011, 2081:4–12 (Koske testimony regarding

April 2004 slide show depicting design of M6 at the time). 

Mr. Koske also testified that SK had to overcome 

technical hurdles through its development process, one of 

which was to reduce wear on the device. Because the 

devices may be used on people in their 20s and 30s and 

would be required to last a lifetime, wear was an important consideration in design choice. See J.A. 20736, 

Tr. Transcript, Nov. 29, 2011, 1991:15–1993:3. In particular, Mr. Koske stated that the shape of the slots on the 

cover plates played a role in wear reduction. Mr. Koske 

explained that, because the metal cover plates are very 

thin, if the slots were too large, it would increase the risk 

of the cover plates breaking. See J.A. 20737, Tr. Transcript, Nov. 29, 2011, 1996:10–1997:12. SK, therefore, 

had to determine the precise size and location of the slots 

to ensure that the cover plates used as little metal as 
16 SYNTHES USA, LLC v. SPINAL KINETICS, INC. 

possible, reduced fiber wear, and still performed all of the 

necessary functions of the device. Id. 

Taken together, Mr. Koske’s testimony is at least circumstantial evidence that it would not be evident that 

peripheral grooves on the cover plates would disclose to 

skilled artisans that internal slots would serve the same 

function. Mr. Koske’s testimony and the exhibits used 

during it, coupled with Dr. Lee’s testimony, provided 

ample evidence for the jury to conclude that the written 

description did not support the broad claim limitations in 

the asserted claims.

Synthes contends that the difference Dr. Lee identified is “specious.” Rather than provide contrary evidence, 

however, Synthes points to a very curt cross-examination 

wherein Dr. Lee agreed with Synthes’ counsel that deeper 

grooves—or grooves cut deeper into the cover plates—

might reduce the distance of the fibers from the central 

axis. J.A. at 20889; Tr. Transcript, Dec. 5, 2011, 2601:16–

23. Synthes’ cross-examination, however, does not address any of Dr. Lee’s other points. And, even if Synthes’ 

cross-examination of Dr. Lee would allow us to draw a 

different conclusion, so long as substantial evidence 

supported the jury’s verdict, we must affirm its decision. 

See First Nat’l Mortg. Co., 631 F.3d at 1067–68; see also 

Guy v. City of San Diego, 608 F.3d 582, 588 (9th Cir. 

2010) (“[I]t has long been held that a jury may properly 

refuse to credit even uncontradicted testimony.”) (citations omitted); Watec Co. v. Liu, 403 F.3d 645, 651 n.5 

(9th Cir. 2005) (“We will not weigh the evidence or assess 

the credibility of witnesses in determining whether substantial evidence exists.”) (citations omitted).

Synthes also attempts to minimize the relevance of 

Mr. Koske’s testimony by contending that his testimony 

was not directed to differences between using peripheral 

grooves and internal slots. Mr. Koske, however, testified

that the shape and size of the slots, and the optimization 
SYNTHES USA, LLC v. SPINAL KINETICS, INC. 17

of those slots, were important design considerations. And, 

while Synthes is correct that Mr. Koske did not use “magic words” to explain why SK chose internal slots instead of 

peripheral grooves, the jury was free to draw its own 

conclusions from Mr. Koske’s testimony. Coupled with 

Dr. Lee’s expert testimony on the “plurality of openings” 

limitation, the jury’s verdict that a person skilled in the 

art would not understand that a disclosure of peripheral 

grooves would teach that any and all openings on the 

cover plates are disclosed is supported by substantial 

evidence. 

The jury was entitled to rely on the above testimony 

and evidence to conclude that the ’270 patent’s written 

description does not support the broad plurality of openings limitation. Written description is a factual question,

and whether the requirement is met “varies depending on 

the nature and scope of the claims and on the complexity 

and predictability of the relevant technology.” Ariad, 598 

F.3d at 1351. While the predictability of the “aspect at 

issue” is not the dispositive factor in determining whether 

the written description requirement is satisfied, the 

district court relied on it, and Synthes strenuously disputes the district court’s conclusion. We, thus, briefly 

address it. Id.

Synthes frames the “aspect at issue” as “the shape 

and locations of openings used to join or anchor a fiber 

system to a plate.” Synthes’ Reply Brief at 46. As chronicled above, Dr. Lee testified that the difference between 

peripheral grooves and internal slots would present 

significant engineering and design choices and maintained that the differences between the two designs would 

present substantial biomechanical differences. Mr. Koske 

also explained that SK itself began its development 

process with peripheral grooves and ended with internal 

slots. Mr. Koske’s testimony also indicated that the shape

of the internal slots was an important design choice that 
18 SYNTHES USA, LLC v. SPINAL KINETICS, INC. 

required testing to account for wear on the fiber system. 

All of this testimony was unrebutted. 

Based on this evidence, the jury was free to conclude 

that, because the ’270 patent’s written description does 

not disclose anything other than peripheral grooves, there 

would be significant biomechanical differences between 

using peripheral grooves and internal slots. The jury was 

also free to determine that SK’s skilled artisans made a 

specific design choice to change its first prototype with 

peripheral grooves to specifically shaped and located

internal slots. And, the jury was free to conclude, based 

on the evidence, that the use of internal slots for these 

devices was not predictable.

SK is correct that a “disclosure of a species may be

sufficient written description support for a later claimed 

genus including that species.” Bilstad v. Wakalopulos, 

386 F.3d 1116, 1124 (Fed. Cir. 2004) (emphasis added). 

But, as we stated in Bilstad: 

[i]f the difference between members of [a species] 

is such that [a] person skilled in the art would not 

readily discern that other [species] of the genus 

would perform similarly to the disclosed members, 

i.e., if the art is unpredictable, then disclosure of 

more species is necessary to adequately show possession of the entire genus.

Id. at 1125. In other words, predictability is a factual 

issue judged on a case-by-case basis. Here, SK presented 

its case to the jury, and the jury inferred that, in the field 

of intervertebral implants, the disclosure of peripheral 

grooves does not adequately demonstrate possession of 

the entire genus of possible openings. Because the jury’s 

verdict is supported by substantial evidence, we must 

defer to that finding.

Synthes contends that, because we remarked in 

Bilstad that the “mechanical world” is a “fairly predicta-
SYNTHES USA, LLC v. SPINAL KINETICS, INC. 19

ble field,” SK had to satisfy a heightened burden to

demonstrate unpredictability. See Bilstad, 386 F.3d at 

1126. First, SK had no higher burden than providing

clear and convincing evidence that the ’270 patent does 

not satisfy the written description requirement on the 

“plurality of openings” limitation. Second, while we did 

state in Bilstad that the mechanical field was “fairly 

predictable,” we did not hold that all inventions that may 

be characterized as “mechanical” allow claiming a genus 

based on disclosure of a single species. 

As we noted in Ariad, there are no “bright-line rules 

governing, for example, the number of species that must 

be disclosed to describe a genus claim, as this number 

necessarily changes with each invention, and it changes 

with progress in a field.” Ariad, 598 F.3d at 1351. Indeed, factual inquiries will, at times, create confounding 

results. But, whatever inconsistencies may appear “to 

exist in the application of the law, those inconsistencies 

rest not with the legal standard but with the different 

facts and arguments presented to the courts.” Id. at 1352. 

That is precisely the situation here. After hearing all of 

the testimony and evidence, the jury resolved the facts in 

favor of SK and determined that it had met its burden of 

proving by clear and convincing evidence that the ’270 

patent did not satisfy the written description requirement. Again, we are not entitled to disturb that finding 

when there was substantial evidence to support it. 

2. Exceptional Case

 Attorneys’ fees may be awarded to the prevailing 

party in “exceptional cases.” 35 U.S.C. § 285. The exceptional nature of a case must be established by clear and 

convincing evidence. Brooks Furniture Mfg., Inc. v. Dutailier, Int’l Inc., 393 F.3d 1378, 1382 (Fed. Cir. 2005). 

Absent litigation misconduct, sanctions may be imposed 

only if: (1) the litigation is brought in subjective bad faith, 

and (2) the litigation is objectively baseless. Id. at 1381. 
20 SYNTHES USA, LLC v. SPINAL KINETICS, INC. 

In deciding whether a case is exceptional, trial courts are 

to consider the “totality of the circumstances” surrounding 

not just the initial allegations of infringement, but the 

maintenance of those claims throughout the litigation. 

See MarcTec, LLC v. Johnson & Johnson, 664 F.3d 907, 

915–19 (Fed. Cir. 2012). Thus, when information gleaned 

from discovery or the court’s rulings make clear that the 

continued pursuit of litigation is frivolous or vexatious, 

fees may be warranted even where the filing of the initial 

complaint was arguably justified. See id.

SK contends that Synthes brought objectively baseless allegations of infringement and validity and continued to push those claims in the face of facts and claim 

construction rulings that made clear that Synthes’ claims 

were unsupportable. SK alleges that Synthes engaged in 

litigation misconduct by taking a number of baseless 

positions on everything from its claim construction arguments to its damages theory. SK contends that the district court’s view of Synthes’ conduct was too myopic, 

failing to examine the propriety of its conduct as a whole. 

After an independent review of the record—in its entirety—we agree with the district court that SK failed to 

demonstrate with clear and convincing evidence that it is 

entitled to attorney fees under § 285. See Synthes, ECF 

No. 577 (N.D. Cal. Sept. 27, 2012). 

III. CONCLUSION

Based on the foregoing, we affirm the district court’s 

denial of JMOL that claims 29–31 of the ’270 patent are 

invalid under 35 U.S.C. § 112, paragraph 1 for lacking an 

adequate disclosure to support the “plurality of openings” 

limitation. We also affirm the district court’s denial of 

SK’s request for attorneys’ fees under 35 U.S.C. § 285. 

Accordingly, we need not reach the other issues addressed 

by the district court and addressed by the parties in the 

briefing before this court.

AFFIRMED
United States Court of Appeals 

for the Federal Circuit ______________________ 

SYNTHES USA, LLC (formerly known as Synthes 

(U.S.A.)) AND DEPUY SYNTHES PRODUCTS, LLC,

Plaintiffs-Appellants,

v.

SPINAL KINETICS, INC.,

Defendant-Cross Appellant.

______________________ 

2013-1047, -1059

______________________ 

Appeals from the United States District Court for the 

Northern District of California in No. 09-CV-1201, Senior 

Judge Ronald M. Whyte.

______________________ 

TARANTO, Circuit Judge, dissenting. 

In my view, Spinal Kinetics failed as a matter of law 

to show, by clear and convincing evidence, that asserted 

claims 29-31 of Patent No. 7,429,270 are invalid for 

inadequacy of the written description. In particular, 

Spinal Kinetics offered no clear and convincing proof that 

the difference between the “openings” of the claims and 

the grooves of the written description is one that (in the 

eyes of skilled artisans) has any effect, let alone an effect 

that is difficult to predict, on fulfillment of the identified 

purposes of the claims at issue. Nor is there any basis for 

finding the written description inadequate to support the 

“flexible core” limitation (or one other limitation for which 
2 SYNTHES USA, LLC v. SPINAL KINETICS, INC. 

the district court itself rejected Spinal Kinetics’s writtendescription challenge). I therefore respectfully dissent 

from the majority’s affirmance of the judgment that the 

patent claims are invalid. 

Regarding the judgment of noninfringement, which 

must be addressed if the invalidity judgment is reversed, 

I conclude that the district court relied on an erroneous 

construction of the claim term “fiber system.” That error 

cannot be disregarded as one we can be confident had no 

effect on the verdict of noninfringement, for the usual 

simple reasons. The jury did not specify that it found 

noninfringement on a basis other than the incorrectly 

construed limitation; there is ample (perhaps conclusive) 

evidence that this limitation is met under the proper 

construction; and there is sufficient evidence to have 

allowed the jury to find that the other limitations are met. 

The jury verdict of noninfringement therefore must be 

vacated. Accordingly, I would remand the case for a 

determination, presumably through a new trial, of whether the accused products infringe under the proper claim 

construction. 

I 

A 

The written-description challenge in this case is to 

structural claim language that is broader than the specific 

embodiments disclosed in the written description. This is 

not a case—such as some cases involving genetic or chemical inventions—in which the claim language at issue is 

functional rather than an identifier of structure. See, e.g., 

Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co., 598 F.3d 

1336, 1349-50 (Fed. Cir. 2010); Regents of University of 

California v. Eli Lilly & Co., 119 F.3d 1559, 1568 (Fed. 

Cir. 1997). Nor is it a case in which the claim language 

includes details that do not appear in the written description. See, e.g., Purdue Pharma L.P. v. Faulding Inc., 230 

F.3d 1320, 1327 (Fed. Cir. 2000). The written-description 
SYNTHES USA, LLC v. SPINAL KINETICS, INC. 3

question here is the familiar one involving whether the 

claim language is simply too broad given the disclosure—

notwithstanding that claim language may be and commonly is broader than described embodiments, as it 

identifies what aspects of the disclosed embodiments 

matter. See In re Rasmussen, 650 F.2d 1212, 1215 (CCPA 

1981) (“[T]hat a claim may be broader than the specific 

embodiment disclosed in a specification is in itself of no 

moment.”); Ronald Slusky, Invention Analysis and Claiming: A Patent Lawyer’s Guide at 32-33 (2007) (discussing 

claim drafting process of identifying what features of 

embodiment matter). 

In a case like this one, the written-description requirement must focus on whether the way in which the 

(broader) claim term differs from the (narrower) disclosure is pertinent to fulfilling the identified purposes of the 

claims at issue. More specifically, for a challenger to 

prove insufficiency of the written description to support 

the claim language, the challenger must identify the 

respect in which the claim language differs from the 

disclosed embodiments. At a minimum, the challenger 

must then demonstrate that, in the eyes of a relevant 

skilled artisan, that particular difference has a material 

effect on whether the product or process would achieve 

the aims of the claims at issue, with materiality of the 

effect not the same as non-obviousness but related to 

predictability (this case requiring no further definition of 

that relation). See Ariad, 598 F.3d at 1351, 1352; Bilstad 

v. Wakalopulos, 386 F.3d 1116, 1124-25 (Fed. Cir. 2004)

(inquiry into whether skilled artisans “would not readily 

discern that other members of the genus would perform

similarly to the disclosed members, i.e., if the art is unpredictable”); In re Curtis, 354 F.3d 1347, 1355, 1358 

(Fed. Cir. 2004) (inquiry into whether skilled artisan 

“could not predict the operability in the invention of any 

species other than the one disclosed”; focus on “unpredictability in performance”); Rasmussen, 650 F.2d at 1215 
4 SYNTHES USA, LLC v. SPINAL KINETICS, INC. 

(inquiry into whether difference from described embodiment is “unimportant” to operability).1 

It is commonly true, of course, that a skilled artisan 

has to make some judgments when seeking to implement 

the patent, whether it is the described embodiments or an 

undescribed embodiment of the broader claim that the 

artisan is proceeding to make and use. If those judgments 

are sufficiently unguided by the written description, 

unknown to a skilled artisan, or uncertain (requiring 

undue experimentation), at least an enablement problem 

may arise—though there is no enablement challenge here. 

What is critical for present written-description purposes 

is this: if there is materially the same range of implementation judgments for the described embodiments and the 

broader claim—such as, here, how many openings/grooves 

to have, their shape, how close to the center and far from 

the periphery they would locate the fibers passing 

through—the need for such judgments is irrelevant to the 

written-description question. What matters is only the 

particular difference between the narrower embodiments 

and broader claims. 

Recognizing the burden of proof carried by the challenger, this approach implements the Ariad formulations: 

whether the inventor “possessed the claimed invention,” 

or “actually invented the invention claimed.” 598 F.3d at 

1351, 1355-56. If the challenger does not make the showing identified above, the relevant skilled artisan will 

understand that, by expressly describing certain embodi1 A patent’s written description may describe more 

than one purpose or problem to be solved, and a particular claim may not address all of them. See, e.g., Phillips v. 

AWH Corp., 415 F.3d 1303, 1327 (Fed. Cir. 2005) (en 

banc). The written-description analysis of a particular

claim must focus on the purposes and problems relevant 

to that particular claim. 

 
SYNTHES USA, LLC v. SPINAL KINETICS, INC. 5

ments, the inventor possessed the more broadly claimed 

invention, because the differences are immaterial to what 

the inventor invented. See In re Peters, 723 F.2d 891, 893 

(CCPA 1983) (reversing claim rejections that were based 

on a difference between the broader claim terms and the 

narrower disclosure, because “[m]ost importantly, one 

skilled in the art would readily understand that in practicing the invention [the difference] is unimportant”). If 

the challenger has made the identified showing, the 

relevant skilled artisan will understand that the inventor 

had not (based on the disclosure) addressed issues of 

consequence to fulfilling the invention’s purpose, and so 

did not possess in full the broadly claimed invention. See 

Ariad, 598 F.3d at 1353 (“Requiring a written description 

of the invention limits patent protection to those who 

actually perform the difficult work of ‘invention’—that is, 

conceive of the complete and final invention with all its 

claimed limitations.”). 

At the same time, this approach aligns with a critical 

role of the written-description requirement in a case 

involving a question of breadth. In such a case, the 

requirement serves to prevent an inventor from acquiring 

exclusivity rights over potential products or processes 

that present problems in achieving the invention’s aims

that he or she has not solved. See Fiers v. Revel, 984 F.2d 

1164, 1171 (Fed. Cir. 1993) (“attempt[s] to preempt the 

future before it has arrived” are “not in compliance with 

the description requirement”). It thus confines patents to 

the problems the inventor solved and leaves to other

people the solutions they identify that the inventor did 

not. 

B 

In this case, Spinal Kinetics failed to present the proof 

required to show an insufficient written description. The 

difference between the claimed “openings” and the disclosed “grooves” is simply that, for a groove, the space 
6 SYNTHES USA, LLC v. SPINAL KINETICS, INC. 

remains open at the perimeter whereas, for an “opening,” 

it need not be: “opening” covers slots wholly interior to the 

outer boundary of the plate. But Spinal Kinetics did not 

prove that that difference—potential closure at the perimeter—had any effect on the ability of the invented 

implants to fulfill their purpose. 

The evident role of the grooves is to prevent sideways 

movement of the fibers, along the perimeter of the plate, 

as they hold the components of the implant together. See

’270 patent at col. 3, lines 27-30 (“By guiding the fibres in 

the grooves the fibre system can be so anchored on the 

cover plates, that in the case of tensile forces acting on the 

fibres no slipping of the fibres on the lateral sides is possible.”) (emphasis added). Nothing in Spinal Kinetics’s 

proof showed that closing the space at the perimeter

affects that function (let alone in an unpredictable way). 

More generally, nothing in Spinal Kinetics’s proof showed 

that the difference between grooves and interior openings 

was material to the working of the claimed device. The

two witnesses on which Spinal Kinetics relies for its

written-description challenge are its expert, Dr. Lee, and 

its Research and Development Manager, Mr. Koske. 

Neither they, nor the documents on which they relied, 

showed (by clear and convincing evidence) how the way in 

which “openings” differ from “grooves” makes any material difference to the working of the claimed device. 

Dr. Lee’s key testimony was his statement that “the 

stress or strain on the fibers” is affected by whether the 

fibers pass through the plate near the center or near the 

perimeter. See J.A. 20853 (Tr. 2456:11-2458:11). But, 

decisively, the distance from the center (or perimeter) is 

not the respect in which “openings” differ from “grooves.” 

Whether the space at the perimeter remains open (as with 

grooves) or closed (as with openings) plays no role in 

determining how far from (or near to) the center the fibers 

pass through the plate: if a groove extends deep toward 

the center, the fibers will pass through the plate there, 
SYNTHES USA, LLC v. SPINAL KINETICS, INC. 7

just as they will if openings are placed at that location. 

Dr. Lee’s testimony, not addressing the difference between openings and grooves, is irrelevant to the analysis.

Nothing else Dr. Lee said makes up for the irrelevance of the foregoing testimony. He testified that he 

could not find the word “openings” in the specification, see 

Joint App. 20852 (Tr. 2453:1-13), but that is itself of no 

importance: the written-description requirement is about 

support in substance, not about labels. Kao Corp. v. 

Unilever U.S., Inc., 441 F.3d 963, 967–68 (Fed. Cir. 2006). 

Dr. Lee also stated that there was a “significant difference 

. . . in biomechanical properties” between the broader 

claim term and the narrower disclosure. See Joint App.

20853 (Tr. 2456:11-2458:11). But without the eventual 

identification of what difference in properties he meant, 

that sentence is entirely a conclusory opinion, which is 

insufficient to meet a burden of proving facts by clear and 

convincing evidence. See, e.g., Active Video Networks, Inc. 

v. Verizon Comm’ns, Inc., 694 F.3d 1312, 1327, 1330-31 

(Fed. Cir. 2012); Krippelz v. Ford Motor Co., 667 F.3d 

1261, 1269 (Fed. Cir. 2012); Ashland Oil, Inc. v. Delta 

Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir.

1985). It was only the distance-from-center testimony 

discussed just above that gave any concrete factual content to the otherwise-conclusory assertion, but that basis, 

as shown, is irrelevant to the required analysis.

Mr. Koske likewise did not present the required proof, 

either through his testimony or through the exhibits 

about which he testified. That evidence established that, 

at one point, Spinal Kinetics had one or more prototypes 

with grooves (and many other features) and that it eventually settled on a design that had interior openings (and 

many other features). But nowhere did Mr. Koske testify, 

and nowhere do the exhibits show, that the earlier prototypes were rejected because they had grooves as opposed 

to interior openings or that the Spinal Kinetics productdevelopment process focused on that difference. See J.A.
8 SYNTHES USA, LLC v. SPINAL KINETICS, INC. 

20757–78 (Tr. 2076:21–2081:13). The evidence identifies 

“technical hurdles” involving whether to use fibers or 

adhesive to anchor the fiber system to the cover plates, see 

J.A. 20736 (Tr. 1991:15-1993:3), and concerns about what 

shape the interior openings should be to preserve disc 

strength, J.A. 20737 (Tr. 1996:10-1997:12), but none of 

the evidence addresses the differences between grooves 

and interior openings in relation to those or any other 

issues. In none of the testimony of Mr. Koske or the 

documents cited by Spinal Kinetics, Brief for Appellee at 

51-52, or the evidence cited by the majority opinion (at 15-

16) is there any indication about how much if any experimentation or study Spinal Kinetics did to choose between 

interior openings and grooves or about any material 

challenges encountered when considering use of interior 

openings versus grooves (there can be a plurality of either, and each can cause the fiber location to be almost 

anywhere in the plate). In my view, this is not clear and 

convincing evidence.

Spinal Kinetics thus failed to establish the importance of the openings/grooves difference. And that 

conclusion is reinforced indirectly by the patent itself—

specifically, by the fact that the written description is not 

actually limited to using grooves for the fibers. The 

majority states that the specification “discloses a series of 

examples of how the fiber system may be anchored on the 

cover plates” and that “[a]ll of these examples employ 

‘grooves,’ not slots or openings on the plates.” Maj. Op. at 

13. But the specification, while reciting grooves in some 

of the examples it gives for how “anchoring of the fibres 

on the cover plates can be carried out,” includes other 

examples that are described without any mention of 

grooves at all. ’270 patent at col. 3, lines 22-62. One 

separately stated example simply calls for “adhering the 

fibre system on the cover plates,” while another calls for 

join the plates “in a form-locking manner.” Id. at lines 35 
SYNTHES USA, LLC v. SPINAL KINETICS, INC. 9

& 42-44. Thus, grooves are not part of all of the anchoring embodiments disclosed in the ’270 patent. 

C 

The jury verdict of insufficient written description for 

the claim at issue cannot be supported on any other 

ground. On appeal, Spinal Kinetics argues that substantial evidence supports finding that two other claim limitations—“substantially rigid bone contacting plate” and 

“flexible core”—lack adequate written-description support. The district court rejected the first contention but 

accepted the second. Both contentions are meritless.

Spinal Kinetics did not prove that the specification, 

which discloses “closing plates” that “are made from 

titanium or a titanium alloy,” ’270 patent, col. 6, lines 4-5, 

fails to adequately describe the claimed “substantially 

rigid bone contacting plate.” The cover plates, as stated 

in the specification, are “anchor[ed to] the fibre system” in 

order to ensure “the intervertebral implant remains 

stable even under the greatest loads and the fibre system 

is capable to withstand even considerable tensile forces.” 

’270 patent, col. 2, lines 35-37. 

Spinal Kinetics argues that the written description is 

inadequate because nowhere but the claims does the 

specification use the terms “rigid” or “substantially rigid.” 

But the “disclosure as originally filed does not . . . have to 

provide in haec verba support for the claimed subject 

matter at issue,” Cordis Corp. v. Medtronic AVE, Inc., 339 

F.3d 1352, 1364 (Fed. Cir. 2003), and Spinal Kinetics 

failed to present any evidence, much less clear and convincing evidence, either (1) that the titanium closing 

plates described by the specification and depicted in 

Figures 3 and 4 were not “substantially rigid” or (2) that a 

skilled artisan, reading the description of the properties 

and functions of the closing plates (i.e., titanium closing 

plates used to stabilize the intervertebral implant), would 

not reliably predict that “substantially rigid” closing 
10 SYNTHES USA, LLC v. SPINAL KINETICS, INC. 

plates achieve the desired properties of the claimed device. See In re Smythe, 480 F.2d 1376, 1383 (CCPA 1973) 

(“[T]he specification clearly conveys to one skilled in the 

art that in this invention the characteristics of a fluid are 

what make the segmentizing medium work in this invention.”). 

For the “flexible core” limitation, Spinal Kinetics rests 

its challenge on the claim term’s purported incompatibility with the disclosure of “an elastically deformable 

formed body . . . with an incompressible core, preferably a 

liquid core.” ’270 patent, col. 5, lines 15-17. This argument, though the district court accepted it, is plainly 

incorrect. An “incompressible core” is in no way irreconcilable with a “flexible core.” Incompressible and flexible 

simply do not conflict: a squeezed balloon that readily 

deforms while maintaining a constant volume is simultaneously flexible and incompressible. Thus, the jury could 

not have reasonably concluded that, because the patent 

specifically discloses an “incompressible core,” the invention could not also include a “flexible” core.

Accordingly, I conclude that there has been no clear 

and convincing evidence that the written description 

inadequately describes the claimed inventions. I would 

reverse the district court’s denial of judgment as a matter 

of law that Spinal Kinetics failed to prove invalidity.

II

As to the judgment of noninfringement, I conclude 

that it relies on an incorrect construction of the claim 

term “fiber system.” The error could well have been the 

basis for the jury verdict, which therefore must be vacated. The case should be remanded for further proceedings 

on whether the accused products infringe under the 

proper claim construction. 

The district court construed “fiber system” as “a collection of fiber strands joined to the third and fourth 
SYNTHES USA, LLC v. SPINAL KINETICS, INC. 11

plates and capable of absorbing tensile forces and constraining radial expansion of the flexible core.” Synthes 

USA, LLC v. Spinal Kinetics, Inc., No. C-09-01201, 2010 

WL 2573379, at *7 (N.D. Cal. June 23, 2010). That importation of functional requirements is incorrect, because 

the term “fiber system” is entirely a structural one. 

“Where a claim uses clear structural language, it is generally improper to interpret it as having functional requirements.” Schwing GmbH v. Putzmeister 

Aktiengesellschaft, 305 F.3d 1318, 1324 (Fed. Cir. 2002); 

accord Toro Co. v. White Consol. Indus., Inc., 266 F.3d 

1367, 1371 (Fed. Cir. 2001) (“An invention claimed in 

purely structural terms generally resists functional 

limitation.”). Spinal Kinetics offers no convincing reason 

to deviate from the general rule in this case. 

Spinal Kinetics notes (correctly) that the specification 

ascribes functions to the “fiber system,” including to 

constrain the radial expansion of the core that it surrounds, see, e.g., ’270 patent, col. 1, lines 26-34, but that is 

not a reason to add those functions to the simple, clear 

“fiber system” of the claim. Where the claim’s structural 

definition of a term leaves ambiguities, such as an unaddressed question of degree, this court has said that “it 

is ‘entirely proper to consider the functions of an invention in seeking to determine the meaning of particular 

claim language.’” ICU Med., Inc. v. Alaris Med. Sys., Inc., 

558 F.3d 1368, 1375 (Fed. Cir. 2009) (quoting Medrad, 

Inc. v. MRI Devices Corp., 401 F.3d 1313, 1319 (Fed. Cir. 

2005)). No such ambiguity exists here. Claim 29 requires 

that the “fiber system” (1) “at least partially surround[] 

the core,” (2) “is at least partially received within the 

plurality of openings formed in the third and fourth plates 

so that the fiber system is joined to the third and fourth 

plates,” and (3) is “at least partially surround[ed]” by “an 

elastic sheathing body.” ’270 patent, col. 8, lines 41-47. 

Spinal Kinetics points to no open questions for which the 

claim itself “does not suggest” an answer. See ICU Med., 
12 SYNTHES USA, LLC v. SPINAL KINETICS, INC. 

558 F.3d at 1375-76. The term “a fiber system” is a 

straightforward structural limitation that needs no further construction, much less the addition of functional 

qualifiers. See O2 Micro Int’l Ltd. v. Beyond Innovation 

Tech. Co., Ltd., 521 F.3d 1351, 1362 (Fed. Cir. 2008). 

Because the jury was given a flawed claim construction, and there was no separate jury finding of noninfringement on another ground and the jury could easily 

have found the “fiber system” element satisfied under the 

correct construction, the verdict of noninfringement must 

be vacated. See August Tech. Corp. v. Camtek, Ltd., 655 

F.3d 1278, 1286 (Fed. Cir. 2011). At the same time, 

Synthes has not shown that it is entitled to judgment of 

infringement, i.e., that no jury could now reasonably find 

noninfringement, considering all of the claim limitations 

at issue, under proper instructions. 

Therefore, the judgment of noninfringement should be 

vacated and the case remanded to the district court. I 

would not further constrain the district court’s discretion 

about how to proceed on remand, including what might be 

decided on new summary judgment motions and whether 

to reconsider any evidentiary rulings that might be seen 

in a different light in any new trial. And, regarding the 

cross-appeal filed by Spinal Kinetics to challenge the 

district court’s denial of its motion for attorney’s fees, it 

suffices to say that my view of Synthes’s appeal would 

mean that Spinal Kinetics would no longer meet even the 

threshold condition of being a prevailing party.