CORRESPONDENCE BETWEEN THE APPLICANT AND ITS ATTORNEY IS IRRELEVANT TO

Howmedica Osteonics Corp., v. Wright Medical Technology, Inc., [2007-1363] (September 2, 2008) [DYK, Prost, Hochberg] The Federal vacated judgment of noninfringement, and remanded.
DISCUSSION: The case involves U.S. Patent No. 5,824,100 which is directed to an artificial knee prosthesis or implant used to replace part or all of a patient’s knee joint. The claim at issue requires only one condylar element. The femoral component must include “at least one condylar element.” The claim then requires that “the condylar element” meet the specified geometric limitations. The issues was if the component contained more than one condylar element, do both condylar elements have to meet the specified geometric limitations.
Every disclosure of a bicondylar knee in the specification shows two condyles each meeting the geometric requirements of claim, but the Federal Circuit noted that the fact that the specification describes only a single embodiment is insufficient to limit otherwise broad claim language. The Court rejected putting any significance to correspondence between the inventor and the attorney, since it is not part of the prosecution history. Defendant also tried to rely on testimony of the invention, but the Federal Circuit rejected this, stating that the testimony of an inventor “cannot be relied on to change the meaning of the claims.”