Tronzo v. Biomet, Inc.
| Decision Date | 02 November 1996 |
| Docket Number | No. 91-8175-Civ.,91-8175-Civ. |
| Citation | 950 F.Supp. 1149 |
| Parties | Raymond G. TRONZO, Plaintiff, v. BIOMET, INC., Defendant. |
| Court | U.S. District Court — Southern District of Florida |
Robert S. Hackleman, Connis O. Brown, III, Fort Lauderdale, FL, for Plaintiff.
L. Martin Reeder, Jr., Steel Hector & Davis, West Palm Beach, FL, for Defendant.
ORDER DENYING BIOMET'S MOTION FOR JUDGMENT AS A MATTER OF LAW AND DIRECTING ENTRY OF FINAL JUDGMENT FOR DR. TRONZO ON THE PATENT CLAIM AND THE COUNTERCLAIM FOR INEQUITABLE CONDUCT
This matter comes before the Court upon Biomet's [202-1] motion for judgment as a matter of law on the same grounds raised in Biomet's [77-1] pending motion for summary judgment. The summary judgment motion was not previously addressed by the court because the court exercised its discretion to submit the case to the jury. Accordingly, at the conclusion of all of the evidence, Biomet renewed the substance of its summary judgment motion as a motion judgment for a matter of law pursuant to Rule 50(a) of the Federal Rules of Civil Procedure. The court reserved ruling and now, after the jury has rendered its verdict, the court takes up the Rule 50 motion. Upon review of the record and the applicable law, and for the reasons given below, the motion is denied.
This litigation concerns the alleged infringement of a patent for the "cup" of an artificial hip prosthesis and related allegations in tort. The matter was tried before a jury which rendered a judgment against the defendant, Biomet, Inc., on all claims. Although the detailed history of this case is presented in this court's Order Denying Biomet's Counterclaim for Inequitable Conduct, rendered 19 June 1996, a brief recitation is helpful to the resolution of the present motion.
The plaintiff, Dr. Tronzo, owns the patent in suit, U.S. Patent No. 4,743,262 ("the '262 patent"), and various earlier patents. The '262 patent claims a genus of finned cups for implantation as a prosthetic in the acetabulum — or the socket portion — of a human hip joint. It also claims specific embodiments of the genus, such as hemispherical and conical shapes. The '262 patent, which was applied for by Dr. Tronzo on 24 March 1987 and issued by the U.S. Patent and Trademark Office ("PTO") on 10 May 1988, is a continuation-in-part of a prior patent, the application for which was co-pending when Dr. Tronzo applied for the '262 patent. This "parent application," as the co-pending application is called, also claimed a the cup portion of a hip implant device, albeit only a cup with the shape of a trapezoid or truncated cone. (Mot.Summ.J.App., at A26; hereinafter cited by page only). The parent application was filed on 1 June 1984, and it matured into U.S. Patent No. 4,681,589 ("the '589 patent") when issued on 21 July 1987.
The accused hip implant device, which Biomet manufactures, is a finned, hemispherically shaped cup. It is known eponymously named the "Mallory-Head cup," after the doctors who invented it. The assertion is that this cup reads on the '262 patent both literally and under the doctrine of equivalents.
The precise claims of the '262 which are at issue in Biomet's motion are Claims 1, 2, 3, 5, 6, 9, 10, and 11. Claim 1 of the 262 patent reads:
An acetabular cup prothesis [sic] comprising a body extending generally longitudinally and terminating into front and rear surfaces, said front surface extending substantially transversely to said body; and at least one fin for securing said cup to a prepared acetabulum cavity, said fin having a length extending generally longitudinally from said front surface toward said rear surface continuously along said body throughout the entire length of said fin, and said fin being configured so as to extend radially outwardly beyond the perimeter of said front surface and said body so as to engage with the cavity thereby securing said cup.
Claim 2 reads:
An implant of claim 1, wherein the body has a generally conical outer surface.
Claim 3 reads:
An implant of claim 1, wherein the body has a generally hemispherical outer surface.
Claim 5 reads:
An implant of claim 1, wherein the implant has a porous outer surface.
Claim 6 reads:
An implant of claim 1, wherein the fins are integral with the body.
Claim 9 reads:
An acetabular cup prosthesis consisting essentially of (1) a body extending generally longitudinally and terminating into front and rear surfaces extending substantially transversely to said body; and (2) at least one fin for securing said cup to a prepared acetabulum cavity, said fin having a length extending generally longitudinally from said front surface toward said rear surface continuously along said body throughout the entire length of said fin, and said fin being configured so as to extend radially outwardly beyond the perimeter of said front surface and said body so as to engage with the cavity thereby securing said cup.
Claim 10 reads:
A prosthesis of claim 9, wherein the body has a generally conical outer surface.
Claim 11 reads:
A prosthesis of claim 9, wherein the body has a generally hemispherical outer surface.
The evaluation of these claims and the substance of the motion before the court today have not arisen in a vacuum. Tracing the course of the '262 patent from filing to issuance is an extensive prosecution history which bears on the decision that the court is called to make today. Most significant for today's motion are two attempts, one each by Biomet and Dr. Tronzo, to have the '262 patent reexamined after issuance. Dr. Tronzo filed for the first reexamination on 4 December 1991. (A286-88). At the time, the '262 had only eight claims. Dr. Tronzo sought reexamination of these claims to confirm their validity in light of three intervening patents applications that Dr. Tronzo had filed with foreign patent offices and which those offices had published. One of the references was Dr. Tronzo's British patent application which is again before the court today.
As the basis for upholding his claims on reexamination, Dr. Tronzo argued that his '589 patent incorporated finned hemispherical cups — and the entire genus of finned cups — by reference to earlier patents he had obtained; thus, his '262 claims were supported by the '589 sufficiently to antedate the intervening references. (A290, ¶ 4; A295). Without embracing or rejecting Dr. Tronzo's "incorporation by reference theory," the examiner determined that the subject matter of the '262 was supported by the specification of the '589. (A483). In reaching this conclusion, the examiner focused particularly on the published British patent application and observed that its only relevant disclosure was also found in the '262 CIP and '589 parent applications in the United States. Id. Thus, without a substantial new question of patentability, the examiner denied the reexamination request and left the claims of the '262 intact. Id.
The second reexamination was requested by Biomet in March of 1992. (A498). The request was based, inter alia, upon two alleged references of intervening prior art. One was a brochure from Biomet promoting the Mallory/Head cup. The second reference was Dr. Tronzo's British Patent application, the very same reference for which Dr. Tronzo also sought reexamination. (A696). It is undisputed that both references arose between the filing of the '589 application and the '262 application and that they were in existence, if not published, more than one year prior to the filing of the '262 application. Thus, the questions on reexamination were simply (1) whether the '262 claims were entitled the same as the filing date of the '589 claims so as to antedate the references and (2) if not, whether the references were "published" in a legal sense, thereby disclosing the hemispherical shape and anticipating the '262 claims.
In light of these references, among others, the patent examiner granted the second reexamination for claims 1 through 6 of the '262 patent. (A695, as amended by A705). The initial conclusion of the examiner during the second reexamination was to reject claims 1-3 and 6 for anticipation under 35 U.S.C. § 102(b). (A707-08). Claim 3, in particular — the dependent claim which included a hemispherical cup — was rejected specifically because of the Biomet brochure. (A710). Implicit in this rejection was the conclusion that the claims could not receive the benefit of the earlier filing date of the '589 so as to antedate the intervening references. The examiner made no explicit finding during the second reexamination as to whether Dr. Tronzo's British application also anticipated claim 3.
Dr. Tronzo responded to this initial office action by arguing that the hemispherical shape was described by the parent application so that the '262 claims antedated the intervening Biomet brochure. (A744). Dr. Tronzo also added claims 9 through 11 to the '262 application. As a result of his filings, the patent examiner entered a final office action which rejected both claims 3 and 11 because of anticipation by the Biomet brochure under 35 U.S.C. § 102(b). (A836-39). The examiner based this rejection on Dr. Tronzo's own admission that the '589 application did not specifically disclose the hemispherical shape. (A837). The examiner also concluded that the hemispherical shape would not be obvious from the '589 description because: (A838).
Dr. Tronzo again responded to the PTO, this time supporting his prior argument that the '262 claims should receive the benefit of the earlier filing date of the '589 application...
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Tronzo v. Biomet Inc
...1154, 47 USPQ2d 1829 (Fed. Cir. 1998) ("Tronzo I"), from the judgment of the Southern District of Florida, Tronzo v. Biomet, Inc., 950 F. Supp. 1149, 41 USPQ2d 1403 (S.D. Fla. 1996). The underlying dispute between Dr. Tronzo and Biomet concerns a medical device, called an "acetabular cup," ......
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Tronzo v. Biomet, Inc.
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