Ramos v. Biomet, Inc.

• Decision Date: 02 August 1993
• Docket Number: No. 90-0417-CIV.,90-0417-CIV.
• Citation: 828 F. Supp. 1570
• Parties: Pedro A. RAMOS, M.D., Plaintiff, v. BIOMET, INC., Defendant.
• Court: U.S. District Court — Southern District of Florida

828 F. Supp. 1570

Pedro A. RAMOS, M.D., Plaintiff, v. BIOMET, INC., Defendant.

No. 90-0417-CIV.

United States District Court, S.D. Florida.

August 2, 1993.

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R.W. Payne, Jr., A. Francisco Areces, Miami, FL, for plaintiff.

Donald E. Knebel, Indianapolis, IN, Bobby B. Gillenwater, Fort Wayne, IN, John T. Kolinski, Miami, FL, for defendant.

MEMORANDUM OPINION CONTAINING FINDINGS OF FACT AND CONCLUSIONS OF LAW

ARONOVITZ, District Judge.

THIS CAUSE was tried before the Court without a jury for a two week period commencing on April 12, 1993 and concluding on April 26, 1993. The Court has carefully considered all of the testimony and exhibits offered by the parties at trial, the entire record herein, the proposed findings and conclusions, and all memoranda of law submitted by the parties. Having done so, and being otherwise fully advised in the premises, the Court herewith renders this opinion containing Findings of Fact and Conclusions of Law pursuant to Rule 52(a) of the Federal Rules of Civil Procedure.

Nature of the Case

This is an action for alleged patent infringement. Pedro A. Ramos, M.D. ("Dr. Ramos") alleges that Biomet, Inc. ("Biomet") has willfully infringed claims 1 and 3 of United States Patent No. 4,380,090 (the "'090 patent") through the manufacture and sale of its BiPolar hip prosthesis. Biomet denies the material allegations of Ramos' complaint, denies that its invention infringes claims 1 or 3 of the '090 patent, and asserts as affirmative defenses that Ramos' claims are barred by the equitable doctrines of laches and estoppel, that the BiPolar hip prosthesis does not infringe the claims of the '090 patent either literally or under the doctrine of equivalents, that the '090 patent is invalid under 35 U.S.C. §§ 102, 103, and/or 112, and that Ramos' claims are barred by the doctrine of prosecution history estoppel.

Dr. Ramos has claimed, and proven by the evidence, that the Defendant, Biomet, infringed literally and through the doctrine of equivalents his duly patented unique hip prosthesis device. As later found herein, total damages are awarded to Dr. Ramos in the aggregate sum of $5,814,478.08. Plaintiff claims that the patented Ramos invention is the first hip prosthesis having an hemispherically fully split bearing insert with an annular outer section removably locked into an acetabular cup.

Prior to trial the parties stipulated and agreed that the allegations of breach of confidences and fraudulent concealment contained in Ramos' Complaint are withdrawn. The parties further stipulated and agreed that the request for attorney's fees contained in Ramos' Complaint is withdrawn.

This Court has federal jurisdiction for this patent infringement action pursuant to 28 U.S.C. § 1338(a), in that this action arises under an Act of Congress relating to patents; namely, 35 U.S.C. § 271, et seq. Venue is appropriate pursuant to 28 U.S.C. § 1400.

Findings of Fact

1. Plaintiff Dr. Ramos is a licensed, practicing physician and surgeon in Dade County, Florida specializing in the practice of orthopaedic surgery.

2. The Defendant, Biomet, Inc., is an Indiana corporation formed in the late 1970's. Biomet is a manufacturer of orthopaedic implants, including hip prostheses.

3. Dr. Ramos is the inventor and owner of U.S. Patent 4,380,090, and has always owned that patent and the applications from which it issued. (Plaintiff's Exhibit No. 5).

4. Ramos U.S. Patent 4,380,090 was issued by the U.S. Patent and Trademark Office ("PTO") on April 19, 1983. (Plaintiff's Exhibit No. 5).

5. On or about March 23, 1983, Dr. Ramos met with Niles Noblitt, Biomet's then Vice President of Technical Affairs (now, Chairman of the Board and Chief Executive Officer), in Miami, Florida. At this meeting, Dr. Ramos disclosed his now patented design and his allowed patent application to Defendant Biomet. The parties discussed Biomet's interest in marketing such an invention. (See Defendant's Exhibit No. 4).

6. At the time Dr. Ramos disclosed his patented invention to Biomet on March 23, 1983, Biomet was not even working on any proposed design for a bipolar hip prosthesis. (See Plaintiff's Exhibit 1).

7. Prior to the time that Dr. Ramos disclosed his invention to Biomet on March 23, 1983, he requested an assurance that Biomet was not working on any proposed design for a bipolar hip prosthesis. (Plaintiff's Exhibit 1; Ramos Testimony, 4/13/93, p. 69; Noblitt Testimony, 4/20/93, p. 84).

8. Prior to the time that Biomet entered into the Confidentiality Agreement with Dr. Ramos relating to his invention, Biomet represented to Dr. Ramos that at that time it had no such device, or any device containing any similar working parts, currently in manufacture, or the subject of research and/or development, and warranted and represented to Dr. Ramos that no such device was then under research and/or development and/or manufacture or production by Biomet. (Plaintiff's Exhibit 1; Ramos Testimony, 4/13/93, pp. 69-70; Noblitt Testimony, 4/20/93, p. 84).

9. After meeting with Dr. Ramos on March 23, 1983, and reviewing his drawings, patent application and specifications thereof relating to his invention, on March 29, 1983, Biomet, through Niles Noblitt, demonstrated an interest in Dr. Ramos' invention for development. (Plaintiff's Exhibit 11; Ramos Testimony, 4/13/93, pp. 71-72; Noblitt Testimony, 4/20/93, pp. 77-80).

10. On May 6, 1983, Biomet again represented to Dr. Ramos that it continued to be interested in Dr. Ramos' bipolar cup design invention, and requested to be provided with a file history and a copy of all prior art references with which Dr. Ramos was familiar. (Plaintiff's Exhibit 12; Ramos Testimony, 4/13/93, pp. 72-73; Noblitt Testimony, 4/20/93, p. 78).

11. On May 19, 1983, Dr. Ramos forwarded to Biomet copies of all references that he went through when researching was done while prosecuting his patent application. (Plaintiff's Exhibit 12A; Ramos Testimony, 4/13/93, pp. 73-74; Noblitt Testimony, 4/20/93, p. 79).

12. About May 19, 1983, Dr. Ramos also sent a copy of his issued '090 patent to Biomet, receipt of which was acknowledged by Biomet. Id.

13. The subject matter claimed in the Ramos '090 patent was disclosed in Dr. Ramos' second patent application, Serial No. 286,532, filed July 24, 1981, which application as of that date constituted a constructive reduction to practice of the claimed invention. (Defendant's Exhibit 3).

14. On June 7, 1983, Biomet acknowledged receipt of Dr. Ramos' May 19, 1983 letter and enclosures, as well as a copy of Ramos' U.S. patent, No. 4,380,090 and continued to be interested in Dr. Ramos' patented bipolar cup design invention and requested a copy of the complete file history relating to the prosecution of the Ramos '090 patent. (Plaintiff's Exhibit 13; Ramos Testimony, 4/13/93, pp. 75-76; Noblitt Testimony, 4/20/93, p. 79).

15. On July 12, 1983, Dr. Ramos responded to Biomet's June 7, 1983 request and forwarded to Biomet the requested information. (Plaintiff's Exhibit 14; Ramos Testimony, 4/13/93, pp. 75-76; Noblitt Testimony, 4/20/93, p. 79).

16. Biomet did not communicate with Dr. Ramos or his attorney after June 7, 1983.

17. Ramos originally had approached Biomet in March, 1983, in an effort to secure an agreement with a manufacturer with the capability of producing and marketing his unique hip prosthesis device. Ramos and Biomet met in Miami, Florida in March, 1983, and discussed, in exacting detail, the specifics of his design. During these discussions, Biomet representatives viewed drawings, were shown the Ramos patent application, and a prototype of a hip prosthesis device manufactured by another company. At that time, Ramos' patent application had already been allowed by the U.S. Patent and Trademark Office and that fact and the allowed patent claims were openly disclosed to Biomet. In May, 1983, Ramos provided Biomet with copies of the issued '090 patent. Biomet and Ramos had corresponded several times. But, after extensive and protracted study of the Ramos design by Biomet representatives, Defendant Biomet in July, 1983 ceased all communication with Dr. Ramos.

18. Before March, 1983, Biomet had worked on a proposed hip prosthesis product, but when Biomet showed a prototype of that proposed product to its distributors and hip surgeons, that proposed product was rejected by such distributors and surgeons, and thus Biomet failed to bring that proposed design to commercial manufacture and sale. After the unsuccessful attempt to enter the bipolar hip prosthesis market, Biomet made no other attempt to do so until after it had been shown Dr. Ramos' patented invention.

19. Biomet hired Tony Fleming in July, 1983. Mr. Fleming testified that by the end of July, 1983, he had designed Biomet's BiPolar hip prosthesis, having never designed a hip prosthesis before.

20. Defendant Biomet began commercially manufacturing and selling its BiPolar hip prosthesis, which Dr. Ramos alleges infringes his '090 patent, in the fall of 1983. Within six months after Dr. Ramos disclosed his invention to Biomet, Biomet had commenced manufacturing and selling the accused Biomet BiPolar hip prosthesis, which incorporates all of the elements and functions of Dr. Ramos' patented design. (Plaintiff's Exhibit 4; Plaintiff's Exhibit 5; Gibson Testimony, 4/16/93, pp. 7-20; Swanger Testimony, 4/19/93, pp. 48-49, 52-64).

21. Before commencing manufacture and sale of the accused Biomet BiPolar hip prosthesis, Biomet had not been manufacturing or selling any bipolar type hip prosthesis. (See Plaintiff's Exhibit 1).

Background

22. This case relates to artificial hip implants. Such implants generally include a "femoral stem" affixed at the top of the femur or thigh bone which has the ball portion removed. The femoral stem includes a ball or "femoral head" at its uppermost portion designed to fit into the "acetabulum" or natural hip socket. A cup-shaped...