Zimmer Technology v. Howmedica Osteonics Corp., 3:02CV-425 AS.

CourtUnited States District Courts. 7th Circuit. United States District Court of Northern District of Indiana
Citation476 F.Supp.2d 1024
Docket NumberNo. 3:02CV-425 AS.,3:02CV-425 AS.
PartiesZIMMER TECHNOLOGY, INC. and Zimmer, Inc., Plaintiffs, v. HOWMEDICA OSTEONICS CORP., Defendant.
Decision Date22 February 2007

Bryan S. Hales, Bryce C. Pilz, Christopher R. Liro, Mark A. Pals, Stephen T. Webb, Shuaib A. Atique, Kirkland & Ellis LLP, Chicago, IL, John M. Desmarais, Kirkland & Ellis LLP, New York City, John David Ladue, Timothy Michael Curran, Boveri Murphy Rice & Ladue LLP, South Bend, IN, for Plaintiffs.

Christopher M. Scharff, Eligio C. Pimentel, Gregory J. Vogler, McAndrews Held & Malloy Ltd., Chicago, IL, Robert J. Palmer, May Oberfell Lorber, Mishawaka, IN, for Defendant.

MEMORANDUM, ORDER & OPINION

ALLEN SHARP, District Judge.

This matter is before the Court on Zimmer's Second Motion for Summary Judgment on Howmedica's Invalidity Defense and Counterclaim (Docket No. 211). Oral arguments were heard on this motion in South Bend, Indiana on March 16, 2006 and August 17, 2006, and the issues have been fully briefed.

I. JURISDICTION

Howmedica is a New Jersey corporation with its principal place of business in New Jersey. First Amended Complaint ¶ 3. It is a wholly-owned subsidiary of the Stryker Corporation of Kalamazoo, Michigan, which designs, manufactures, and sells medical products, including prosthetic implants. Id. Zimmer Technology, Inc. is a Delaware corporation with its principal place of business in Chicago, Illinois. Id. at ¶ 1. Zimmer, Inc. is a Delaware corporation with its principal place of business in Warsaw, Indiana. Id. at ¶ 2. Collectively Zimmer Technology, Inc. and Zimmer, Inc. design, manufacture, and sell medical products, including prosthetic implants. This Court's jurisdiction is based on 28 U.S.C. § 1338(a). Venue is based on 28 U.S.C. §§ 1391(b) and (c).

II. PROCEDURAL HISTORY

On April 3, 2003, the Court denied Zimmer's Motion for Summary Judgment of Infringement of U.S. Patent No. 5,290,313, entitled "Offset Prosthetic Stem Extension," and granted the Motion for Summary Judgment of Noninfringement filed by Howmedica. Zimmer Inc. v. Howmedica Osteonics Corp., 258 F.Supp.2d 874 (N.D.Ind.2003). On May 26, 2004, the United States Court of Appeals for the Federal Circuit reversed and remanded the case to this Court for further proceedings in accordance with its opinion.1 This Court entered a final claim construction order on October 12, 2005. In that order, this Court denied the parties' motions for summary judgment as premature and granted the parties leave to file new motions for summary judgment no later than January 3, 2006.2 On January 24, 2006, Zimmer filed its Second Motion for Summary Judgment on Howmedica's Invalidity Defense and Counterclaim (Docket No. 211). Zimmer seeks an entry of summary judgment that the Loda patent and Koch application cannot anticipate any claim of the '313 patent for which Howmedica has offered no evidence of anticipation. Zimmer's motion for summary judgment also asks this Court to rule as a matter of law that the Loda patent and Howmedica Kinematic Offset Stem Implant are not prior art to the '313 patent. Finally, Zimmer argues that, to the extent any of Howmedica's sources are prior art, that the '313 patent is not invalidated because it is not anticipated by the Loda patent or Koch application.

III. PATENTS AT ISSUE
A. The '313 Patent and Claim Construction

Zimmer is the assignee of U.S. Patent No. 5,290,313 ("the '313 patent"). Mark A. Heldreth filed the '313 patent with the United States Patent and Trademark Office ("USPTO") on November 23, 1992, and the patent issued on March 1, 1994. The '313 patent is directed to a modular system for surgically-implanted prosthetic joints and covers an offset prosthetic stem extension. The '313 patent describes a modular implant system that replaces human joints and bones and was described primarily, though not exclusively, for use with prosthetic knee joints.

The '313 patent is comprised of a modular implant system wherein the base portion (10) and a stem extension (1) are joined together and inserted into a bone. The base portion is comprised of a base mounting means (12), and the stem extension is comprised of a stem mounting portion (2) and an elongated stem portion (3). These are joined by the connection portion (4). '313 patent, col. 2, 11. 50 — col. 3, 11. 9. This base portion is then attached to the stem extension by mounting the base mounting portion on the stem mounting portion. The extending tapered pin (33) of the stem mounting portion mates with the corresponding tapered recess (43) of the base mounting portion in a "Morse taper." The axis of the Morse taper (A) is offset from the axis of the elongated stem portion (B) by offset (0). The substantially parallel, central longitudinal, offset axis of the '313 patent allows the elongated stem portion to be inserted into the intermedullary canal of the tibia, while allowing the base portion to remain centered relative to the resected bone surface. '313 patent, fig. 9, col. 3, ll. 9-44. During surgery, the '313 patent can be rotated around its attachment point to the base portion, allowing it to be moved relative to the stem extension and thus allowing the surgeon to achieve maximum coverage of the resected surface. However, once the desired position is selected, the stem extension is fixed with respect to the base portion. A figure of the '313 patent is reproduced below:

NOTE: OPINION CONTAINING TABLE OR OTHER DATA THAT IS NOT VIEWABLE

The '313 patent contains seventeen (17) claims. Claim 1 is an independent claim, and claims 2 through 17 are dependent upon claim 1. Claim 1 claims:

A modular prosthesis comprising a prosthetic base portion having a surface for positioning adjacent to a corresponding bone, the base portion having a base mounting means thereon, and a stem extension for insertion into a cavity in a bone, the stem extension having a stem mounting means for mounting the stem extension to the base mounting means, and the stem extension further having an elongated stem portion connected to the stem mounting means by a connection portion, and wherein the stem mounting means has a first central longitudinal axis and the elongated stem portion has a second central longitudinal axis substantially parallel to the first axis, but which is spaced apart therefrom to provide an offset there-between.

'313 patent, col. 5, ll. 17-30.

The Federal Circuit held that there is no radial adjustment requirement in claim 1. Zimmer, Inc. v. Howmedica Osteonics Corp., 111 Fed.Appx. 593, 600 (Fed.Cir. 2004). The Federal Circuit construed the terms "modular prosthesis system" and "stem extension" to mean a standardized prosthesis system which encompassed both one-piece and multiple-piece stem extensions.3 Id. at 599-600. On remand, this Court accepted Zimmer's argument that the Federal Circuit only partially construed the term "stem extension" and further construed that term ["stem extension"] as requiring "a standardized prosthesis system including a prosthetic base portion ... and a stem extension, that are located on the same side of a joint." Zimmer Technology, Inc. v. Howmedica Osteonics Corp., 397 F.Supp.2d 974, 984-85 (N.D.Ind.2005).

"Stem mounting means is a means plus function limitation such that the limitation covers the embodiments disclosed in the specification that perform this function and their equivalents." Zimmer, 111 Fed. Appx. at 600. The Federal Circuit held that the claimed function is "mounting" and stated that the disclosed structure for performing this function is a Morse taper.4 On remand, this Court construed the term "mounting" as "a Morse taper or equivalent structures capable of performing the claimed function of mounting the stem extension to the base." Zimmer, 397 F.Supp.2d at 987.

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 is dependent upon claim 2 and claims: "[t]he system of claim 2 wherein the stem extension is releasably fixed to the base portion in the selected orientation." '313 patent, col. 5, 11. 36-38. The Federal Circuit construed the term "releasably fixed to the base portion" as requiring that the connection between the base portion and stem extension "be releasable after the surgeon has selected the desired position for the stem extension axis, which occurs during surgery." Zimmer, 111 Fed.Appx. at 602. On remand, this Court noted that, in this context, mounting or fixing was previously construed in claim 1 as "putting in position for use." To effectuate consistency between terms, this Court construed "releasably fixed" as "releasably fixed to the base portion in the selected orientation."

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 claims: "[t]he system of claim 1 wherein the base mounting means includes a recess therein, and wherein the stem mounting means includes an extending pin for mating with the recess."`313 patent, col. 6, ll. 1-4. In construing the "stem mounting means" of claim 1, the Federal Circuit stated that the disclosed structure for performing the mounting function is the Morse taper. The specification states that a Morse taper includes an extending pin and a recess. '313 patent, col. 3, 11. 45-50. The base mounting means must include a recess therein, and the stem mounting means must include an extending pin for mating with the recess. '313 patent, col. 3, 11. 45-48. This Court construed "extending pin" as the "male component of a Morse taper" and "recess" as the "female component of a Morse taper." Zimmer, 397 F.Supp.2d at 989.

Claim 13 requires that the...

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