Zimmer Technology v. Howmedica Osteonics Corp.

Decision Date28 September 2006
Docket NumberNo. 3:02-CV-425.,3:02-CV-425.
PartiesZIMMER TECHNOLOGY, INC. and Zimmer, Inc., Plaintiffs, v. HOWMEDICA OSTEONICS CORP., Defendant.
CourtU.S. District Court — Northern District of Indiana

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

Christopher M. Scharff PHV, Eligio C. Pimentel PHV, Gregory J. Vogler PHV, 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 the Motion for Partial Summary Judgment on Howmedica's Invalidity Defense and Counterclaim and Motion for Summary Judgment on Howmedica's Estoppel Defense (Docket No. 183) filed by Plaintiffs, Zimmer Technology, Inc. and Zimmer, Inc. (collectively, "Zimmer"). This matter is also before the Court on the Motion for Summary Judgment (Docket No. 216) and the Motion for Summary Judgment of Invalidity (Docket No. 217) filed by the Defendant, Howmedica Osteonics Corp. ("Howmedica"). Oral arguments were heard on these motions 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 Markman 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 After this Court issued its final Markman order, the parties filed cross motions for summary judgment, claiming that this Court's comprehensive claim construction ruling, definitively shows that Howmedica's product infringe or do not infringe on the '313 patent. Additionally, Howmedica filed a motion arguing that the '313 patent is obvious and thus invalid as a matter of law, and Zimmer filed a motion for summary judgment that its infringement claims are not limited by the doctrine of equitable estoppel.

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"). The '313 patent was filed by Mark A. Heldreth ("Heldreth") 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, 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 (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, 11. 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. Zimmer argues that Howmedica's accused products contain every limit of claim 1 of the `313 patent, thus infringing upon the `313 patent. 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").

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, 11. 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." This Court further construed the 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, ll. 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...

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