`
`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`SPINEOLOGY, INC.,
`Plaintiff-Appellee
`
`v.
`
`WRIGHT MEDICAL TECHNOLOGY, INC., A
`DELAWARE CORPORATION,
`Defendant-Appellant
`______________________
`
`2018-1276
`______________________
`
`Appeal from the United States District Court for the
`District of Minnesota in No. 0:15-cv-00180-JNE-FLN,
`Judge Joan N. Ericksen.
`______________________
`
`Decided: December 14, 2018
`______________________
`
`RANDALL THOMAS SKAAR, Skaar Ulbrich Macari, P.A.,
`Minnetonka, MN, argued for plaintiff-appellee.
`
` ANTHONY JAMES FITZPATRICK, Duane Morris LLP,
`Boston, MA, argued for defendant-appellant. Also repre-
`sented by CHRISTOPHER S. KROON; DIANA SANGALLI,
`THOMAS W. SANKEY, Houston, TX.
` ______________________
`
`Before PROST, Chief Judge, DYK and MOORE, Circuit
`Judges.
`
`
`
`2
`
`SPINEOLOGY, INC. v. WRIGHT MEDICAL TECHNOLOGY INC.
`
`MOORE, Circuit Judge.
`Wright Medical Technology, Inc., appeals the United
`States District Court for the District of Minnesota’s denial
`of its motion for attorney fees under 35 U.S.C. § 285.
`Because we hold that the district court did not abuse its
`discretion in denying Wright’s motion, we affirm.
`BACKGROUND
`Spineology, Inc., is the assignee of U.S. Patent
`No. 6,383,188, reissued as No. RE42,757, which describes
`an “expandable reamer” for use in orthopedic surgery.
`’757 patent at 1:16–17. Wright manufactures a reamer
`known as the X-REAM®. In 2015, Spineology sued
`Wright, alleging the X-REAM® infringes claims 15, 21–
`23, and 33–35 of the ’757 patent.
`The district court issued a claim construction order in
`2016. In the order, it acknowledged that the parties
`disputed construction of the term “body,” but it declined to
`adopt either party’s construction. Wright and Spineology
`then filed cross-motions for summary judgment on in-
`fringement. Recognizing the alleged infringement de-
`pended on how “body” was construed, the district court
`construed
`“body”
`consistent with Wright’s non-
`infringement position and granted Wright’s motion.1
`Wright then moved for attorney fees, arguing Spine-
`ology’s proposed construction of “body,” its damages
`theories, and its litigation conduct rendered this case
`“exceptional” under § 285. The district court denied the
`motion. It determined that, while ultimately the court
`
`
`1 We affirmed this construction and the grant of
`summary
`judgment of non-infringement on appeal.
`Spineology, Inc. v. Wright Med. Tech., Inc., 739 F. App’x
`633, 637–38 (Fed. Cir. 2018).
`
`
`
`SPINEOLOGY, INC. v. WRIGHT MEDICAL TECHNOLOGY INC.
`
`3
`
`rejected Spineology’s proposed construction, “[t]he at-
`tempt was not so meritless as to render the case excep-
`tional.” J.A. 64. It similarly determined “the arguments
`made by Spineology to support its damages theory . . . are
`not so meritless as to render the case exceptional.”
`J.A. 65. It concluded “[n]othing about this case stands out
`from others with respect to the substantive strength of
`Spineology’s litigating position or the manner in which
`the case was litigated.” J.A. 65–66.
`DISCUSSION
`Under § 285, “[t]he court in exceptional cases may
`award reasonable attorney fees to the prevailing party.”
`“[A]n ‘exceptional’ case is one that stands out from others
`with respect to the substantive strength of a party’s
`litigating position (considering both the governing law
`and the facts of the case) or the unreasonable manner in
`which the case was litigated.” Octane Fitness, LLC v.
`ICON Health & Fitness, Inc., 134 S. Ct. 1749, 1756 (2014).
`“District courts may determine whether a case is ‘excep-
`tional’ in a case-by-case exercise of their discretion, con-
`sidering the totality of the circumstances.” Id. We review
`“all aspects of a district court’s § 285 determination for
`abuse of discretion,” keeping in mind that “the district
`court ‘is better positioned’ to decide whether a case is
`exceptional, because it lives with the case over a pro-
`longed period of time.” Highmark Inc. v. Allcare Health
`Mgmt. Sys., Inc., 134 S. Ct. 1744, 1747 (2014) (quoting
`Pierce v. Underwood, 487 U.S. 552, 559–60 (1988)).
`Because we hold the district court did not abuse its
`discretion in denying Wright’s motion for attorney fees
`under § 285, we affirm.
`
`I
`Wright argues Spineology’s claim construction posi-
`tion was so unreasonable it rendered this case “exception-
`
`
`
`4
`
`SPINEOLOGY, INC. v. WRIGHT MEDICAL TECHNOLOGY INC.
`
`al” under § 285. It argues Spineology’s proposed construc-
`tion of “body” was meritless, and its continued pursuit of
`this construction after the district court declined to adopt
`it in the claim construction order was unreasonable. We
`are unpersuaded.
`Prior to the claim construction order, Spineology and
`Wright each proposed a construction of “body.” J.A. 18,
`21. In the order, the district court “decline[d] to adopt
`either party’s proposed construction of ‘body,’” determin-
`ing “the claims themselves provide substantial guidance
`as to the meaning of the claim.” J.A. 22. It was not until
`summary judgment that the district court construed
`“body” consistent with Wright’s, rather than Spineology’s,
`proposed construction.
`We agree with the district court that, while Spineolo-
`gy’s proposed construction of “body” was ultimately re-
`jected at summary judgment, “[t]he attempt was not so
`meritless as to render the case exceptional.” J.A. 64. As
`we have stressed, “[a] party’s position . . . ultimately need
`not be correct for them not to ‘stand[] out’.” SFA Sys.,
`LLC v. Newegg Inc., 793 F.3d 1344, 1348 (Fed. Cir. 2015).
`And Wright cannot fairly criticize Spineology for continu-
`ing to pursue a construction not adopted by the district
`court in the claim construction order, since the district
`court declined to adopt Wright’s proposed construction as
`well. We see no abuse of discretion here.
`II
`Despite the fact that this case was resolved on sum-
`mary judgment of non-infringement with no consideration
`of or rulings on damages, Wright argues the district court
`should have, as part of its exceptional case determination,
`reviewed the parties’ various expert reports on damages
`and assessed the merits of Spineology’s damages theories.
`Wright argues that, after such a review, the district court
`should have concluded that Spineology’s damages theories
`
`
`
`SPINEOLOGY, INC. v. WRIGHT MEDICAL TECHNOLOGY INC.
`
`5
`
`were so unreasonable as to render this case “exceptional”
`under § 285. Wright criticizes the lost profits analysis
`offered by Spineology’s expert, Mr. Nantell, as improperly
`calculating the sales Wright would have made “but for”
`Spineology’s infringement. It also criticizes Mr. Nantell’s
`reasonable royalties analysis as improperly relying on the
`entire market value rule (“EMVR”) and employing a
`flawed royalty rate. We are unpersuaded.
`“This court has affirmed lost profit awards based on a
`wide variety of reconstruction theories,” Versata Software,
`Inc. v. SAP Am., Inc., 717 F.3d 1255, 1263–64 (Fed. Cir.
`2013), and Spineology marshaled case law to make a
`colorable argument in support of Mr. Nantell’s reliance on
`the EMVR, e.g., Interactive Pictures Corp. v. Infinite
`Pictures, Inc., 274 F.3d 1371, 1384–86 (Fed. Cir. 2001).
`Perhaps Spineology’s damages theories would not have
`prevailed, but “a strong or even correct litigating position
`is not the standard by which we assess exceptionality.”
`Stone Basket Innovs., LLC v. Cook Med. LLC, 892 F.3d
`1175, 1180 (Fed. Cir. 2018). The district court explained
`that, even if it had excluded Spineology’s damages expert,
`Spineology’s damages theories are not so meritless as to
`render the case exceptional. J.A. 65. Wright argues on
`appeal that the district court did not do enough to analyze
`the merits of Spineology’s damages theory. We do not
`agree. On this record, where the district court never
`reached the parties’ damages arguments, we are in no
`position to upend its determination that Mr. Nantell’s
`analysis was not meritless.
`Wright asks this court to basically decide the damages
`issues mooted by summary judgment in order to deter-
`mine whether it ought to obtain attorney fees for the
`entire litigation. This we will not do. We will not force
`the district court, on a motion for attorney fees, to conduct
`the trial it never had by requiring it to evaluate Mr.
`Nantell’s “but for” calculations or royalty rates, and we—
`
`
`
`6
`
`SPINEOLOGY, INC. v. WRIGHT MEDICAL TECHNOLOGY INC.
`
`an appellate court—will certainly not conduct that trial in
`the first instance.
`A district court need not, as Wright seems to urge, lit-
`igate to resolution every issue mooted by summary judg-
`ment to rule on a motion for attorney fees. And we need
`not, as Wright requests, get into the weeds on issues the
`district court never reached. We see no abuse of discre-
`tion in the district court’s determination that “the argu-
`ments made by Spineology to support its damages theory
`. . . are not so meritless as to render the case exceptional.”
`J.A. 65. We see no error in the district court’s determina-
`tion that, on this record, the case was not exceptional, and
`we caution future litigants to tread carefully in their
`complaints about district courts not doing enough.
`III
`Wright further challenges as “exceptional” Spineolo-
`gy’s conduct during litigation. It criticizes Spineology for
`allegedly attempting to mislead the district court with a
`cropped and annotated version of Figure 2, ignoring
`evidence that undermined its proposed construction of
`“body,” and withholding its expert’s measurements of the
`X-REAM®. Again, we are unpersuaded.
`As the district court observed, nothing Wright points
`to makes this case “stand[] out from others with respect to
`. . . the unreasonable manner in which the case was
`litigated.” J.A. 65-66. The district court has “live[d] with
`the case over a prolonged period of time.” Highmark, 134
`S. Ct. at 1747–48 (quoting Pierce, 487 U.S. at 559–60). It
`saw Spineology’s version of Figure 2, considered the
`evidence regarding claim construction, and compelled
`production of the X-REAM® measurements. The district
`court is undoubtedly “‘better positioned’ to decide whether
`[this] case is exceptional.” Id. We see no abuse of discre-
`tion in the district court’s determination that it is not.
`
`
`
`SPINEOLOGY, INC. v. WRIGHT MEDICAL TECHNOLOGY INC.
`
`7
`
`IV
`Wright requests that, at a minimum, we remand this
`case for a more complete assessment of whether the
`“totality of the circumstances” renders this case excep-
`tional. Octane Fitness, 134 S. Ct. at 1756. We see no
`need to do so.
`After reviewing Wright’s arguments regarding Spine-
`ology’s claim construction position, damages theories, and
`litigation conduct, the district court concluded “[n]othing
`about this case stands out from others with respect to the
`substantive strength of Spineology’s litigating position or
`the manner in which the case was litigated.” J.A. 65–66.
`The district court “had no obligation to write an opinion
`that reveals [its] assessment of every consideration,” and
`remand is unnecessary to obtain one. Univ. of Utah v.
`Max-Planck-Gesellschaft, 851 F.3d 1317, 1323 (Fed. Cir.
`2017).
`
`CONCLUSION
`Because we review “all aspects of a district court’s
`§ 285 determination for abuse of discretion,” and we see
`no abuse here, we affirm. Highmark, 134 S. Ct. at 1747.
`We remind that “fee awards are not to be used ‘as a
`penalty for failure to win a patent infringement suit.’”
`Checkpoint Sys., Inc. v. All-Tag Sec. S.A., 858 F.3d 1371,
`1376 (Fed. Cir. 2017).
`AFFIRMED
`COSTS
`
`Costs to Spineology.
`
`
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