-
Federal Circuit Affirms Summary Judgment Of Noninfringement Based On Limiting Preambles And Denial Of JMOL Of Noninfringement For Substantial Evidence
09/22/2026On September 11, 2026, the United States Court of Appeals for the Federal Circuit affirmed the United States District Court for the Eastern District of Pennsylvania’s grant of summary judgment of noninfringement as to two patents and denial of plaintiff’s motion for judgment as a matter of law (“JMOL”) of infringement as to a third patent. Moskowitz Family LLC v. Globus Medical, Inc., No. 2024-1696 (Fed. Cir. Sept. 11, 2026). In doing so, the Court held that the preambles of the asserted claims of U.S. Patent Nos. 8,353,913 (“the ’913 patent”) and 9,889,022 (“the ’022 patent”) were limiting, that the district court correctly construed the term “universal,” and that substantial evidence supported the jury’s finding that claim 1 of U.S. Patent No. 10,478,319 (“the ’319 patent”) was not infringed.
The three patents at issue are directed to tools and implant systems used in spinal-fusion surgery.
With respect to the ’913 and ’022 patents, the district court construed “universal” in a manner that rendered the accused products admittedly non-infringing. Plaintiff therefore dropped asserted claims that included “universal” in the body of the claim—but maintained its infringement allegations for claims that included “universal” only in the preamble, arguing that the preambles were not limiting (and, therefore, that the construction of “universal” did not affect its infringement argument). Defendant moved for summary judgment, arguing that the preambles were limiting, and that, because the preambles include the term “universal,” its products do not infringe. The district court agreed and granted summary judgment of noninfringement.
With respect to the ’319 patent (and two other patents not at issue in the appeal), which did not include the term “universal,” the case proceeded to a jury trial that resulted in a finding of non-infringement. Plaintiff then moved for JMOL of infringement, but the district court denied its motion. This appeal followed.
On appeal, with respect to the ’913 and ’022 patents, the Federal Circuit agreed that the preambles limited the claims because they supplied essential structure and meaning rather than merely describing an intended use. Both preambles are abnormally long. The preamble of claim 1 of the ’913 patent recites: “A tool for manipulating and inserting a universal, intervertebral bone fusion spacer into a disc space between a first vertebral body and a second vertebral body for providing fusion of the first vertebral body to the second vertebral body via biological bone fusion and screw fusion, wherein the universal, intervertebral bone fusion spacer includes an intervertebral cage having a first integral screw guide and a second integral screw guide, wherein each longitudinal end of the intervertebral cage includes a slot or indentation formed adjacent to an edge of an upper surface of the intervertebral cage, the tool comprising….” And, the preamble of claim 47 of the ’022 patent recites: “A universal, intervertebral combination internal screw guide and fixation apparatus configured to be inserted into a disc space between a first vertebral body and a second vertebral body and to provide fusion of the first vertebral body to the second vertebral body via biological bone fusion and screw fusion, the apparatus comprising….” The body of claim 1 of the ’913 patent, refers to, e.g., “the intervertebral cage,” “the first integral screw guide” and “the second integral screw guide,” which are terms first introduced in the preamble. The Federal Circuit, therefore, found that these terms depended on the preamble for antecedent basis and thus that the district court correctly found the preamble to be limiting. For the ’022 patent, the Federal Circuit found that—without the preamble—the claim body did not set out the complete invention because the preamble supplied the requirement that the claimed apparatus be a “universal” apparatus configured to perform specified functions. On that point, the Federal Circuit explained that the specifications of both patents describe universality as a fundamental characteristic of the inventions.
With respect to the construction of “universal,” the Federal Circuit rejected plaintiff’s contention on appeal that the district court’s construction improperly required a physically impossible “one-size-fits-all” device. The Federal Circuit explained that the patents instead describe a design adaptable for different spinal regions and surgical approaches.
With respect to the district court’s denial of JMOL of infringement of the ’319 patent, plaintiff characterized the issue on appeal as a question of claim construction regarding a limitation that requires a gripper “cooperating” with a handle. However, the Federal Circuit explained that, because the parties did not request a construction of “cooperating” during Markman, the relevant question on appeal is not one of claim construction, but rather whether substantial evidence supports the verdict under the agreed-upon plain and ordinary meaning of the term. On that question, the Federal Circuit noted that plaintiff’s expert provided only limited testimony, while, by contrast, both defendant’s expert and one of its fact witnesses offered relevant testimony. The Federal Circuit held that the jury was entitled to credit the testimony of defendant’s witnesses and that substantial evidence therefore supported the verdict.
The decision confirms that a claim preamble may be limiting when it supplies antecedent basis or necessary context and that an adverse infringement verdict should stand when substantial evidence supports the jury’s application of an unconstrued claim term.
IP Litigation