Before Rich, Clevenger, and Gajarsa, Circuit Judges.
The opinion of the court was delivered by: Rich, Circuit Judge.
Appealed from: U.S. District Court for the Central District of California Judge George H. King
United States Court of Appeals for the Federal Circuit
Karlin Technology, Inc. and Sofamor Danek Group, Inc., (collectively, Karlin) appeal from the decision of the United States District Court for the Central District of California, Civil Action No. 95-CV-258, granting a motion for summary judgment of noninfringement of claims 1, 3, and 4 of U.S. Patent No. 5,015,247 (the '247 patent) in favor of Surgical Dynamics, Inc. (SDI). Because the accused device meets each of the properly construed limitations of the asserted claims, we reverse the decision and grant a summary judgment of literal infringement of claims 1, 3, and 4 in favor of Karlin. Because other issues are outstanding, including SDI's motion for a summary judgment that the '247 patent is invalid, we remand the case for further proceedings.
Karlin Technology, Inc. is the assignee of the '247 patent, entitled "Threaded Spinal Implant," and Sofamor Danek Group, Inc. is a licensee under that patent. The '247 patent describes spinal implants for stabilizing adjacent spinal vertebrae, and describes the invention generally as comprising a hollow cylinder with external threads along, and holes through, the cylindrical surface. The hollow portion of the implant is intended to be filled with bone or other osteogenic material so that, while the affected vertebrae are initially stabilized by the implants themselves, bone growth through the holes in the implants eventually fuse the vertebrae together.
SDI makes and sells the Ray TFC spinal implant, which comprises a hollow cylinder with external threads along, and holes through, the cylindrical surface. SDI sued Karlin for a declaratory judgment of noninfringement and invalidity of the '247 patent. Karlin counterclaimed for a judgment that the '247 patent was not invalid and that the Ray TFC implant infringes claims 1, 3, and 4 of the '247 patent, both literally and under the doctrine of equivalents. The parties filed opposing motions for summary judgment on the issues of claim construction and infringement, and SDI filed a motion for a summary judgment that the '247 patent is invalid.
Claims 1, 3, and 4, which Karlin alleges are infringed by the Ray TFC implant, read as follows (emphasis on the disputed limitation added):
"1. A fusion implant comprising a cylindrical member having an outside diameter larger than the space between the two adjacent vertebrae to be fused and a series of threads on the exterior of the cylindrical member for engaging said vertebrae to maintain said implant in place, a plurality of openings in the cylindrical surface of said member, said outside diameter of said cylindrical member being substantially uniform over the entire length of the implant.
"3. The implant of claim 1 in which said implant has a hollow portion for receiving autogenous bone for promoting bone ingrowth.
"4. The implant of claim 3 in which said implant has a removable cap for covering said hollow portion."
The district court interpreted the "series of threads" limitation in claim 1 to require threads that are "highly specialized in that they are periodically interrupted, such that the tail ends of each of the tabs so formed are blunted and twisted so as to resist accidental unscrewing." The court held that, given this construction, there was no genuine issue of material fact and SDI was entitled to a summary judgment that the Ray TFC spinal implant did not infringe the asserted claims of the '247 patent, either literally or under the doctrine of equivalents. The court did not rule on SDI's motion for a summary judgment of invalidity. Karlin appeals the grant of summary judgment of noninfringement in favor of SDI.
Our review of a grant of summary judgment of patent infringement or noninfringement is plenary. See Cole v. Kimberly-Clark Corp., 102 F.3d 524, 528, 41 USPQ2d 1001, 1004 (Fed. Cir. 1996). We first determine whether "the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law." Unidynamics Corp. v. Automatic Prod. Int'l, Ltd., 157 F.3d 1311, 1316, 48 USPQ2d 1099, 1102 (Fed. Cir. 1998) (quoting Fed. R. Civ. P. 56(c)). "In determining whether there is a genuine issue of material fact, the evidence must be viewed in the light most favorable to the party opposing the motion, with doubts resolved in favor of the opponent." Chiuminatta Concrete Concepts, Inc. v. Cardinal Indus., Inc., 145 F.3d 1303, 1307, 46 USPQ2d 1752, 1755 (Fed. Cir. 1998).
"An infringement analysis entails two steps. The first step is determining the meaning and scope of the patent claims asserted to be infringed. The second step is comparing the properly construed claims to the device accused of infringing." Markman v. Westview Instruments, Inc., 52 F.3d 967, 976, 34 USPQ2d 1321, 1326 (Fed. Cir. 1995) (en banc) (internal citation omitted), aff'd, 517 U.S. 370 (1996). In this case, the claim construction issue centers on the phrase "series of threads" contained in claim 1. We first discuss the proper construction of that phrase and then compare the properly construed claims to the accused Ray TFC spinal implant. ...