The opinion of the court was delivered by: Elaine K. Bucklo, United States District Judge
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*fn1 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
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.
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 claims as follows.
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, 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.
Claim 1 uses the term "bone" several times. DePuy argues that the term should be construed to mean "hip bone" or "femur," while 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. 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).*fn3
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 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.").*fn4 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 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 ...