Zimmer Technology v. Howmedica Osteonics Corp.
| Decision Date | 12 October 2005 |
| Docket Number | No. 3:02 CV 425.,3:02 CV 425. |
| Citation | 397 F.Supp.2d 974 |
| Parties | ZIMMER TECHNOLOGY, INC. & Zimmer, Inc., Plaintiff, v. HOWMEDICA OSTEONICS CORPORATION, Defendant. |
| Court | U.S. District Court — Northern District of Indiana |
Bryan S. Hales, Christopher R. Liro, John M. Desmarais, Mark A. Pals, Stephen T. Webb, Chicago, IL, Abigail M. Butler, David P. Irmscher, Fort Wayne, IN, Gerard T. Gallagher, South Bend, IN, John D. LaDue, Timothy M. Curran, South Bend, IN, for Plaintiff/Petitioner.
Eligio C. Pimentel, Gregory J. Vogler, Chicago, IL, Robert J. Palmer, Mishawaka, IN, for Defendant/Respondent.
The record in this case is complicated, and the processes involved are rather challenging. An examination of the dissents by the two senior members of the United States Court of Appeals for the Federal Circuit in Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed.Cir.2005) indicates the enormity of the difficulties involved in this process. For all of these reasons, once this Court has completed its obligation to properly construe the remaining disputed claim terms, it is incumbent upon all of the counsel in this case to give the closest possible attention to the issues that have been raised in the motions for summary judgment. This Court will, in this regard, set a schedule for further and closer briefing on those issues and further oral argument.
On April 3, 2003, this Court entered an Order denying Plaintiff, Zimmer, Inc.'s ("Zimmer"), Motion for Summary Judgment of Infringement of U.S. Patent No. 5,290,313 (the "'313 patent"), entitled "Offset Prosthetic Stem Extension," and granting Defendant, Howmedica Osteonics Corporation's ("Howmedica") Motion for Summary Judgment of Noninfringement. Zimmer, Inc. v. Howmedica Osteonics Corp., 258 F.Supp.2d 874 (N.D.Ind.2003). Zimmer appealed this Court's decision, and 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.
In its opinion, the Federal Circuit construed certain claim terms but declined to construe other claim terms that may have been in dispute at the time of summary judgment. The Federal Circuit also stated that it was not appropriate for it, on appeal, to determine whether the claims of the '313 patent are infringed by Howmedica's Duracon Total Stabilizer Revision System ("the infringing Duracon system") and the Scorpio Single Axis Total Knee System ("the infringing Scorpio system")(collectively, "the accused products"). Rather, the Federal Circuit simply found that there existed genuine issues of material fact sufficient to preclude a grant of summary judgment of noninfringement.
Since that time, the record in this case has grown substantially. The parties have renewed their respective motions, and on June 9, 2005, this Court held oral arguments in South Bend, Indiana. Zimmer seeks to have the '313 patent declared valid and enforceable in law and infringed by Howmedica's products. Contrastingly, Howmedica asserts that claims 1-4, 6, 8, and 13-17 of the '313 patent are invalid under 35 U.S.C. § 102(b) and/or § 103 in view of U.S. Patent No. 4,106,128 to Greenwald, et al. ("the Greenwald patent"). Recognizing that the Federal Circuit's Mandate and the findings contained therein are part of the law of this case, it is now the responsibility of this Court to properly construe the claims of the '313 patent and rule on Howmedica's Renewed Motion for Summary Judgment of Invalidity of Claims 1-4, 6, 8, and 13-17 and Noninfringement of Claims 5, 7, and 9-12 of the '313 patent and Zimmer's Motion for Partial Summary Judgment on Howmedica's Defense and Counterclaim that the Greenwald Patent Anticipates or Renders Obvious the Asserted Claims of the '313 patent.
Howmedica is a New Jersey corporation with its principal place of business in New Jersey. Complaint ¶ 2. It is a wholly-owned subsidiary of the Stryker Corporation of Kalamazoo, Michigan, which designs, manufactures, and sells various medical products. Id. Zimmer is a Delaware corporation with its principal place of business in Indiana. Complaint ¶ 1. Zimmer also designs, manufactures, and sells various medical products and is the assignee of the '313 patent. This Court has subject matter jurisdiction pursuant to 28 U.S.C. § 1338(a), and venue is based on 28 U.S.C. §§ 1391(b) and (c).
There is a vast factual record in this case, and this Court, in rendering its decision, has taken careful consideration of all such facts. This Court also takes judicial notice of the record in this case.
Zimmer holds the '313 patent, entitled "Offset Prosthetic Stem Extension." The application for the '313 patent was filed on November 23, 1992, and the United States Patent and Trademark Office issued Zimmer's '313 patent on March 1, 2004. The '313 patent was issued with seventeen (17) claims, with Claim 1 as an independent claim and Claims 2-17 dependent upon Claim 1. The '313 patent is directed to a modular system for surgically-implanted prosthetic joints and covers an offset prosthetic stem extension. The '313 patent was designed primarily, though not exclusively, for use with prosthetic knee joints.
The '313 patent describes 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, ll. 50-col. 3, ll. 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 (O). 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.
Howmedica manufactures 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"). The '920 patent was issued by the United States Patent and Trademark Office ("Patent and Trademark Office") after the '313 patent was issued. The '920 patent describes a system that includes a base portion/tray element (12) that is joined to an elongated stem portion (14). Before assembly, the adapter element (16) is separated from the stem portion and is attached to the elongated stem portion by a threaded connection. The base portion (12) is then attached to the connection portion by a second threaded connection rather than by a Morse taper.
Howmedica asserts that the Greenwald patent, Patent No. 4,106,128 ("the Greenwald patent") is prior art and that every element of the claimed invention of the '313 patent is found in that prior art. The Greenwald patent was issued by the United States Patent and Trademark Office on August 15, 1978 and is entitled "Endoprosthetic Bone Joint." It was designed primarily to cover prosthetic joints of the type used to replace dysfunctional, non-weight bearing joints, such as the knuckle, wrist, elbow or shoulder. 01/27/03 Howmedica Reply, Exhibit 2E, Greenwald Patent Abstract. The Greenwald patent contains a radial component (10) that includes a radial intramedullary stem (11) and a radial cup (13). The joint is comprised of a metacarpal component (30), which includes a spherical ball (31), an intramedullary stem (3) and a socket (21). The socket surrounds the ball of the metacarpal component and mates with the inside cup portion of the radial component.
On or about June 17, 2002, Zimmer filed a patent infringement lawsuit against Howmedica, alleging that the accused products infringed claim 1 of the '313 patent along with claims 2-4, 6, 8, 13, 14 and 17, all of which are dependent upon claim 1. On October 16, 2002, Howmedica moved for summary judgment of noninfringement or, in the alternative, invalidity of the '313 patent. Then, on January 6, 2003, Zimmer filed a cross motion for summary judgment of infringement.
In April 2003, this Court granted Howmedica's Motion for Summary Judgment of Noninfringement and denied Zimmer's Motion for Summary Judgment of Infringement. On May 26, 2004, the Federal Circuit overturned the judgment of noninfringement and remanded the case back to this Court for further proceedings consistent with its opinion. In its opinion, the Federal Circuit construed certain claim terms but declined to construe other claim terms that may have been in dispute at the time of summary judgment. Because the claim construction was incorrect in the first instance, and due to the fact that the Federal Circuit declined to construe all disputed claim terms on appeal, the onus is on this Court to undertake a claim construction of the remaining disputed terms. Those terms already construed by the Federal Circuit are now law of the case. See Ethicon Endo-Surgery, Inc. v. U.S. Surgical Corp., 149 F.3d 1309, 1315 (Fed.Cir.1998)(where the court established the construction of all claim terms in dispute, making the prior construction law of the case).
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Zimmer Technology v. Howmedica Osteonics Corp.
...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 d......
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Zimmer Technology v. Howmedica Osteonics Corp.
...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 embod......