Zimmer, Inc. v. Howmedica Osteonics Corp.

• Decision Date: 03 April 2003
• Docket Number: No. 3:02 CV 0425AS.,3:02 CV 0425AS.
• Citation: 258 F.Supp.2d 874
• Parties: ZIMMER, INC., Plaintiff, v. HOWMEDICA OSTEONICS CORP., Defendant.
• Court: U.S. District Court — Northern District of Indiana

258 F.Supp.2d 874

ZIMMER, INC., Plaintiff, v. HOWMEDICA OSTEONICS CORP., Defendant.

No. 3:02 CV 0425AS.

United States District Court, N.D. Indiana, South Bend Division.

April 3, 2003.

David P. Irmscher and Abigail M. Butler of Baker & Daniels, Fort Wayne, IN, for Plaintiff.

Robert J. Palmer, May Oberfell and Lorber, South Bend, IN, Gregory J. Vogler and Eligio C. Pimentel of McAndrews, Held & Malloy, Ltd., Chicago, IL, for Defendant.

MEMORANDUM AND ORDER

ALLEN SHARP, District Judge.

Plaintiff, ZIMMER, INC. ("ZIMMER"), filed this lawsuit seeking a declaratory judgment that two products manufactured and sold by Defendant, HOWMEDICA OSTEONICS CORP. ("HOWMEDICA") infringe on a patent held by ZIMMER. HOWMEDICA filed a Motion for Summary Judgment of Noninfringement and, in the alternative, Motion for Summary Judgment of Patent Validity. Subsequently, ZIMMER filed a Motion for Summary Judgment of Infringement. Only if no reasonable jury could find for ZIMMER should HOWMEDICA's Motion be granted, requiring that ZIMMER's motion for summary judgment be denied. This Court heard the parties' oral arguments on the motions for summary judgment in South Bend on February 4, 2003.

Jurisdiction

This Court's jurisdiction is based upon 28 U.S.C. § 1338(a). This Court's venue is based on 28 U.S.C. § 1391(b) & (c).

Facts

ZIMMER is a Delaware corporation with a principle place of business in indiana. HOWMEDICA, a New Jersey corporation and a wholly-owned subsidiary of Stryker Corporation, does business in Indiana. Both parties design, manufacture, and sell various medical supplies, including prosthetic implants.

It is well-established that, during its summary judgment analysis, the Court must construe the facts and draw all reasonable inferences in the light most favorable to the nonmoving party. Smith v. Fruin, 28 F.3d 646, 650 (7th Cir.1994), cert, denied, 513 U.S. 1083, 115 S.Ct. 735, 130 L.Ed.2d 638 (1995); Brennan v. Daley, 929 F.2d 346, 348 (7th Cir.1991), reh'g denied, 1993 WL 518446. As this Court is faced with cross-motions for summary judgment, the Court will construe the facts and draw its inferences regarding infringement in the light most favorable to HOWMEDICA, and will construe the facts and draw its inferences regarding noninfringement in the light most favorable to ZIMMER.

ZIMMER holds U.S. Patent No. 5,290,313 (hereinafter termed the '313 patent), which describes a modular implant system that replaces human joints and bones. It is comprised of two modular components, a base and stem, that are joined together inside the body when the one-piece base is mounted onto the one-piece stem using an extending pin. The '313 patent requires a two-piece modular system contains a modular stem which is mounted into a modular base.

The '313 patent was issued with seventeen claims. Claim 1¹ is an independent claim, Claims 2-17 are dependent upon Claim 1. ZIMMER's Statement of Undisputed Material Facts recites the Claims of the '313 Patent that are material to the dispute between the parties. It may be helpful to recite these Claims here. Claim 1 describes the base, stem and separate mounting means for both, with a stem extension and elongated stem portion having two central longitudinal axes which are "substantially parallel" but are spaced apart to provide an offset between the two axes. Claim 2 requires that the stem mounting means be radially adjustable in cooperation with the base mounting means to permit the second axis of the stem to be oriented in a plurality of radial orientations relative to the first axis. Claim 3 requires that the stem extension be "releasably fixed", ZIMMER argues that "releasably" means that the "orientation of the stem extension relative to the base portion is releasable to allow the user to select the desired orientation of the base portion with respect to the stem extension." (ZIMMER's Statement of Undisputed Material Facts, p. 5, no. 21.) Claim 4 requires that the connecting portion include a lower transition surface that crosses the first axis. Claim 6 requires that this lower transition surface cross the first axis at an angle between 5 and 90 degrees. Claim 8 requires that the base mounting means include a recess therein and that the stem mounting means include an extending pin for mating with the recess. Claim 13 requires that the system be comprised of a plurality of base and stem extensions, each of varying sizes, but designed so that any base could be attached to any stem. Claim 14 requires that the stem extensions be sized to provide a plurality of offsets by varying the distance between the first and second axes. Claim 17 requires that the user be able to select a position of the stem mounting means in a plurality of orientations relative to the base mounting means so that the second longitudinal axis may be oriented in a plurality of positions with respect to the first axis and the base portion. ZIMMER argues that HOWMEDICA's accused products contain every limit of Claim 1 of the '313 patent.

HOWMEDICA manufactures, among other things, the Duracon Total Stabilizer ("Duracon") and the Scorpio TS ("Scorpio") as a licensed user of U.S. Patent No, 5,782,920 (the "'920 patent"). It must be noted that the '920 patent was issued by the United States Patent and Trademark Office ("U.S.P.T.O.") after the '313 was issued. The '920 patent requires a four-piece system that includes a tray element, and offside adapter, a locking ring, and a stem extension and which are connected by threaded screw connections. HOWMEDICA's products, being licensed under the '920 patent, must consist of those components. HOWMEDCIA's Memorandum Supporting Summary Judgment, at 4-5. The '920 patent describes a single-axis stem extension and separate offset adaptor, like those contained in HOWMEDICA's accused products. HOWMEDICA denies that the Duracon and Scorpio infringe on any of the claims of the '313 patent.

This case calls for an examination of three patents: a Lazarri patent, the '313, and the '920 patent. This comparison is important because Lazarri was issued prior to the '313 patent and, as prior art, if the '313 patent's claims encompassed Lazarri's claims, the U.S.P.T.O. presumably would not have issued the'313 patent. In addition, in order to obtain the '313 patent, ZIMMER made admissions before the U.S.P.T.O. that distinguished the '313 from the Lazarri patent. These admissions are relevant to the present dispute. Similarly, '920 was issued by the U.S.P.T.O. after the '313. If the '920's patent's claims infringed the claims of '313, with '313 being prior art, then the U.S.P.T.O. presumably would not have issued the'920 patent.

Much of the discussion in the parties' memoranda supporting and opposing summary judgment address three key differences between the '313 patent and the accused products. These are summarized as follows:

Modular stem extension: The '313 patent requires two modular² components; a base and a stem extension. The '313 patent requires that the stem extension be comprised of a single part, with two offset longitudinal axes that are available in varying sizes, so that any of its stem extensions can be attached to any of its base portions. (ZIMMER Memorandum Supporting Summary Judgment, Ex. 1 at 4:67-5:3; HOWMEDICA's Memorandum in Opposition to Summary Judgment, p. 22). The axes allow for radial adjustment to achieve a proper fit each individual patient. (Id.) Conversely, HOWMEDICA's products do not include the same or similar stem extension with a means of mounting them into bases. HOWMEDICA's products have only one longitudinal axis of orientation. (HOWMEDICA's Memorandum Supporting Its Motion for Summary Judgment, pp. 12-13). HOWMEDICA's products consist of offset adaptor components and stem components, each of which are sold separately and are combined by a threaded screw connection. The two components then are affixed to each other permanently through the use of a third piece, a locking ring, and then are implanted. (HOWMEDICA's Memorandum in Opposition to ZIMMER's Motion for Summary Judgment at 23-24, HOWMEDICA's Memorandum Supporting Summary Judgment, p. 13).

Stem extension component:The '313 patent requires that there be a stem extension component that contains two offset, longitudinal axes. This is an important element because ZIMMER emphasized this distinction in its arguments before the U.S.P.T.O. In its efforts to obtain the '313 patent. ZIMMER's argument in this regard consisted of a compare/contrast argument in relation to the Lazarri patent. The '313 patent required that both axes be: (1) located in the stem extension component; (2) substantially parallel; (3) spaced apart from each other to provide an offset. (ZIMMER Memoranda, Ex. 3 at HM00068 ('313 file history); HOWMEDICA's Memorandum in Opposition to ZIMMER's Motion for Summary Judgment at 16). This language indicates that the '313 patent have be a one-part stem extension component. On the other hand, HOWMEDICA's products require two parts: an elongated stem extension and an offset adaptor. (HOWMEDICA's Memorandum in Opposition to ZIMMER's Motion for Summary Judgment at 20). The modular stem extension present in HOWMEDICA's products are not the same as those described in the claims of the '313 patent. Moreover, the '313 patent requires the ability to be radially adjusted by means of the stem extension component. HOWMEDICA's products cannot be adjusted because they require the use of permanent screw connections. (HOWMEDICA's Memorandum in Opposition to ZIMMER's Motion for Summary Judgment at 20).

Connections: The '313's stem extension is mounted to the base through one of two stem mounting means, either a conical or tapered extending pin on the stem extension that mates with a compatible recess or pin that is located on the base.³ (HOWMEDICA's Memorandum Supporting Summary Judgment at 12.) When using a product licensed under the '313 patent, a surgeon can select the orientation of the stem extension when...