Biedermann Techs. GMBH & Co. KG v. K2M, Inc.

• Decision Date: 25 March 2021
• Docket Number: Case No. 2:18cv585
• Citation: 528 F.Supp.3d 407
• Parties: BIEDERMANN TECHNOLOGIES GMBH & CO. KG, Plaintiff, v. K2M, INC. and K2M Group Holdings, Inc., Defendants.
• Court: U.S. District Court — Eastern District of Virginia

528 F.Supp.3d 407

BIEDERMANN TECHNOLOGIES GMBH & CO. KG, Plaintiff,

v.K2M, INC. and K2M Group Holdings, Inc., Defendants.

Case No. 2:18cv585

United States District Court, E.D. Virginia, Norfolk Division.

Signed March 25, 2021

Stephen Edward Noona, Kaufman & Canoles, P.C., Micaylee Alexa Noreen, McGuireWoods LLP, Norfolk, VA, Colin Bosch, Pro Hac Vice, Luke Lucien Dauchot, Pro Hac Vice, Sharre Lotfollahi, Pro Hac Vice, Kirkland & Ellis LLP, Los Angeles, CA, Edward Charles Donovan, Pro Hac Vice, Nathan Scott Mammen, Nichole Brittany DeJulio, Pro Hac Vice, Kirkland & Ellis LLP, Washington, DC, Craig Crandall Reilly, Law Office of Craig C. Reilly, Alexandria, VA, for Plaintiff.

Robert Martin Tata, Wendy Cohen McGraw, Hunton Andrews Kurth LLP, Norfolk, VA, Alexander Solo, Pro Hac Vice, Andrew T. Lane, Pro Hac Vice, Charles P. Kennedy, Pro Hac Vice, Gregory S. Gewirtz, Pro Hac Vice, Russell W. Faegenburg, Pro Hac Vice, Lerner, David, Littenberg, Krumholz & Mentlik, LLP, Cranford, NJ, for Defendants.

OPINION AND ORDER

Mark S. Davis, CHIEF UNITED STATES DISTRICT JUDGE

This matter is before the Court on cross-motions for summary judgment in the above referenced patent case.¹ After careful consideration of the briefs submitted by the parties, the Court GRANTS IN PART and DENIES IN PART each party's motion seeking summary judgment.

I. PROCEDURAL HISTORY

At issue in this case are multiple related patents held by plaintiff Biedermann Technologies GmbH & Co. KG, ("Biedermann" or "Plaintiff"): U.S. Patent No. 9,814,595 ("the ’595 patent"), U.S. Patent No. 10,130,485 ("the ’485 patent"), U.S. Patent No. 6,736,820 ("the ’820 patent"), U.S. Patent No. 8,945,194 ("the ’194 patent"), U.S. Patent No. 9,566,093 ("the ’093 patent"), U.S. Patent No. 8,123,784 ("the ’784 patent"), U.S. Patent No. 8,828,060 ("the ’060 patent"), U.S. Patent No. 9,895,173 ("the ’173 patent"), U.S. Patent No. 10,058,353 ("the ’353 patent"), U.S. Patent No. 9,572,600 ("the ’600 patent"), U.S. Patent No. 9,597,121 ("the ’121 Patent"), and U.S. Patent No. 8,257,399 ("the ’399 Patent"). All of the patents-in-suit relate to medical devices intended primarily for use in spinal surgery. This Court previously conducted a Markman hearing and issued an order construing eighteen disputed claim terms found in Biedermann's patents associated with the following medical devices: (1) "multi-walled placeholders" used to replace vertebrae or vertebral discs (among other applications); (2) "bone screws

," also referred to as "pedicle screws," designed to pivot in at least one direction by an enlarged angle; (3) an "anchoring element" attached to a bone screw designed to connect to one or more "rods," some of which utilize a "square thread" screw to secure the rod(s); and (4) a bone anchoring device utilizing a moveable "pressure member."

Biedermann's patent infringement lawsuit against K2M, Inc. and K2M Group Holdings, Inc. (collectively, "K2M" or "Defendants") was filed in this Court on November 2, 2018, and Biedermann served the original complaint on November 6, 2018. Three days after service, while this case was still in its infancy, K2M was acquired by Stryker Corporation ("Stryker"), a competitor of Biedermann in the spinal implant/device industry. As revealed through the parties’ briefs and exhibits, Stryker and Biedermann have competed in such industry for many years and have been involved in prior litigation regarding patent rights. In fact, such prior litigation led to a still-in-force patent license agreement that includes a provision expressly barring Stryker from taking any steps to invalidate or otherwise challenge the validity or enforceability of certain specified Biedermann patents, to include the ’820 patent. See ECF No. 314-1. The scope and effect of such agreement presents a key dispute on summary judgment.

II. STANDARD OF REVIEW

Federal Rule of Civil Procedure 56(a) provides that a district court shall grant summary judgment in favor of a movant if such party "shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law." Fed. R. Civ. P. 56(a). The mere existence of some alleged factual dispute between the parties "will not defeat an otherwise properly supported motion for summary judgment; the requirement is that there be no genuine issue of material fact." Anderson v. Liberty Lobby Inc., 477 U.S. 242, 247–48, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). "A genuine question of material fact exists where, after reviewing the record as a whole, a court finds that a reasonable jury could return a verdict for the nonmoving party." Dulaney v. Packaging Corp. of Am., 673 F.3d 323, 330 (4th Cir. 2012).

Although the initial burden on summary judgment falls on the moving party, once a movant properly files evidence supporting summary judgment, the non-moving party may not rest upon the mere allegations of the pleadings, but instead must set forth specific facts in the form of exhibits and sworn statements illustrating a genuine issue for trial. Celotex Corp. v. Catrett, 477 U.S. 317, 322–24, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). "Because ‘credibility determinations, the weighing of the evidence, and the drawing of legitimate inferences from the facts are jury functions, not those of a judge,’ " the Court must only evaluate the evidence to the extent necessary to determine whether there is "sufficient disagreement to require submission to a jury or whether [the evidence] is so one-sided that one party must prevail as a matter of law." McAirlaids, Inc. v. Kimberly-Clark Corp., 756 F.3d 307, 310 (4th Cir. 2014) (quoting Anderson, 477 U.S. at 251–52, 255, 106 S.Ct. 2505 ). In making its determination, "the district court must ‘view the evidence in the light most favorable to the’ nonmoving party." Jacobs v. N.C. Admin. Off. of the Courts, 780 F.3d 562, 568 (4th Cir. 2015) (quoting Tolan v. Cotton, 572 U.S. 650, 657, 134 S.Ct. 1861, 188 L.Ed.2d 895 (2014) ).

When faced with cross-motions for summary judgment, each motion must be considered "separately on its own merits to determine whether either of the parties deserves judgment as a matter of law," and "all factual disputes and any competing, rational inferences" must be resolved "in the light most favorable to the party opposing that motion." Defenders of Wildlife v. N.C. Dep't of Transp., 762 F.3d 374, 392 (4th Cir. 2014) (internal quotation marks omitted).

III. K2M'S SUMMARY JUDGMENT MOTION

K2M seeks summary judgment on four grounds: (1) K2M's spinal implants/placeholders do not directly infringe on Biedermann's ’595 and ’485 patents ; (2) Biedermann cannot establish infringement of the ’595 and ’485 patents under the doctrine of equivalents; (3) Biedermann's licensees’ "failure to mark" their products with Biedermann patent numbers precludes pre-suit infringement damages as to multiple patents; and (4) Biedermann's "willful infringement" claim fails for lack of evidence.

A. Spinal Implants - Literal Infringement ’595 and ’485

K2M's summary judgment motion first asserts that Biedermann's ’595 and ’485 "placeholder patents" are only infringed by a "multi-walled" placeholder, and that based on this Court's Markman construction of the term "wall," as well as other related claim terms (most notably, "connectors"), no reasonable juror could conclude that K2M's products literally infringe on Biedermann's placeholder patents. For the reasons set forth below, Defendants’ motion is DENIED as to literal infringement, notwithstanding the Court's viewpoint that K2M offers compelling arguments on this issue. Stated another way, while this Court has a clear picture as to how it would rule were it permitted to "weigh" the competing evidence, the decision on how to define the line between two structural walls with connectors, and a single thick wall with various internal openings, appears to require judgment calls that cannot be made without weighing the evidence, meaning that the law permits only the factfinder to resolve this dispute. The Court is compelled to make such finding in light of the dueling expert opinions, notwithstanding Defendants’ strong evidentiary showing that their device is not a "multi-walled" placeholder with at least one connecting portion, as required by the relevant Biedermann patents.

This Court's Markman Opinion interpreted the claim term "wall" as "necessarily refer[ring] to a three dimensional structure with a ‘thickness’ and not merely a ‘wall surface.’ " ECF No. 265, at 11. The Court's analysis noted that Biedermann's patents use terms such as "wall surface" or "jacket surface" when discussing a mere surface of a placeholder wall (rather than the structural wall itself), and that equating the term "wall" with a "wall surface" would be inconsistent in the context of the patents at issue, a context that Biedermann is itself responsible for creating. Id. at 13-15. Notably, while certainly not controlling, the titles of the patents at issue are "multi-walled placeholder," and the "background" sections acknowledge the fact that "placeholders, especially for vertebrae or vertebral discs are known," in the art, to include placeholders that have "a scaffold-like structure in which the latticework extends over the full body or through the entire body of the implant." ’485 1:20-45, ECF No. 14-15. Biedermann's patents explain that such lattice design is purportedly "difficult to manufacture" and has to "be adjusted and manufactured individually to suit every application case," with Biedermann's invention seeking to provide both ease of manufacturing and versatility in application by utilizing multi-walled placeholders, often consisting of multiple "tubular bodies" that are inserted inside each other and connected with various forms of "connectors" to space apart the multiple walls. Id. at 1:20-2:18. While it is the patent claims themselves, and not the "background," that controls, the relevant claims similarly require at last two structural walls (inner and...