In Norian Corp., v. Stryker Corp., No. 02-1490, -1506, -1507 (Fed. Cir. April 6, 2004), the federal circuit affirmed the invalidity of Norian抯 �4 patent and reversed the the noninfringement determination with respect to its �5 patent, each relating to the repair of bones or teeth with certain rapidly setting calcium phosphate compositions.
Norian sued Stryker based on the sale of certain kits containing a mixture of tetracalcium phosphate and dicalcium phosphate, and thereafter -- sodium phosphate. When mixed, the ingredients formed a rapidly setting cement. The district court held, on summary judgment, that Stryker did not infringe the '065 patent and that Stryker induced infringement of claims 1, 7, and 8 of the '264 patent, if the claims were valid. A jury found the �4 patent claims invalid for obviousness.
Affirming the finding of obviousness of the �4 patent claims, the federal circuit stated a reasonable jury could have found that the Brown and Iwamoto references provided the motivation to one skilled in the art to choose a lubricant having a pH of 6-11 as claimed for the purpose of obtaining a rapidly setting calcium phosphate composition, given the express disclosure of the Brown reference in Iwamoto and the use of the same dry precursors in the two references.
The jury was improperly permitted to hear evidence of Norian抯 counsel抯 misstatements regarding the Brown reference (even though the court denied a summary judgment motion for inequitable conduct), and improperly instructed that proceedings before the PTO were relevant to the presumption of validity; however the federal circuit held that Norian抯 failure to object to the erroneous instruction was fatal to the court抯 ability to provide relief from any alleged prejudicial effects.
The court affirmed the finding of no willful infringement, affirmed the JMOL ruling that the �4 patent was not anticipated by a 1991 IADR Extended Abstract, vacated as moot the issue of damages with respect to the �4 patent, and remanded the issue of damages with respect to the �5 patent.
Finally, the court reversed the decision on noninfringement of the �5 patent claims, directed to a kit for preparing a calcium mineral. The accused kit sold by Stryker included a spatula. The �5 patent, however, recited the claimed kit as 揷onsisting of� certain chemical elements but did not recite a spatula. The federal circuit held that the term 揷onsisting of� permitted no other chemicals in the kit for infringement, but did not preclude the presence of the spatula for purposes of infringement. The court noted that the spatula had no interaction with the chemicals and was irrelevant to the invention.
Dissenting from the judgment regarding the interpretation of the �5 patent claims, Judge Schall stated it was error for the majority to have construed the 揷onsisting of� language to limit only chemical, but not other (mechanical) components that may be present.
To view the full decision visit http://www.aplf.org/mailer/Issue197.doc
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