United States District Court, N.D. Illinois, Eastern Division
November 2, 2004.
DEPUY, INC., a Delaware corporation, Plaintiff,
ZIMMER HOLDINGS, INC., a Delaware corporation, and ZIMMER, INC., a Delaware corporation, Defendants.
The opinion of the court was delivered by: ELAINE E. BUCKLO, District Judge
MEMORANDUM OPINION AND ORDER
Plaintiff DePuy, Inc. ("DePuy") alleges that defendants Zimmer
Holdings, Inc. and Zimmer, Inc. (collectively, "Zimmer") have
infringed its patent No. 5,370,706 (the "'706 Patent"). The then
pleaded claims and defenses of the parties and the court's
initial construction of the patent claims invoked are set forth
in my published memorandum opinion and order, DePuy, Inc. v.
Zimmer Holdings, Inc., 276 F. Supp. 2d 910 (N.D. Ill. 2003). On
March 12, 2004, I entered a minute order granting DePuy's motion
for reconsideration of a portion of my prior opinion insofar as
it dealt with construction of the limitation "different size and
shape" as used in the '706 Patent. I also granted leave to Zimmer
to file a supplemental amended answer, affirmative defenses and
counterclaims in response to the complaint. I will not restate
the facts and claims of the parties except as may be necessary for an
understanding of the rulings set forth below.
The '706 Patent concerns a hip replacement prosthesis system
consisting of multiple pieces which can be interchangeably fitted
together to form an appropriately-sized prosthesis. DePuy alleges
that Zimmer's ZMR Hip System, which also consists of a
multiple-piece hip prosthesis system, infringes the '706 Patent.
Before the court are the following motions: Zimmer seeks
summary judgment on the alternative grounds that its system does
not infringe the '706 Patent and that the Patent is invalid.
DePuy's cross-motions for partial summary judgment ask this court
to rule as a matter of law that the '706 Patent is not invalid on
the basis of two pieces of prior art, that Zimmer cannot
establish its defense of inequitable conduct, and that Zimmer
cannot establish its defense of patent misuse or its antitrust
counterclaim. DePuy also moves to strike and exclude from
evidence certain documents which Zimmer offers as proof that the
'706 Patent is invalid for anticipation and obviousness. Zimmer
asks this court to rule on certain issues relating to licensing
Summary judgment is appropriate where the record and
affidavits, if any, show that there is no genuine issue of
material fact and that the moving party is entitled to judgment
as a matter of law. Lexington Ins. Co. v. Rugg & Knopp,
165 F.3d 1087, 1090 (7th Cir. 1999); FED. R. CIV. P. 56 (c). I
must construe all facts in the light most favorable to the non-moving party and draw all
reasonable and justifiable inferences in favor of that party.
Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255 (1986).
The claims that DePuy alleges Zimmer has infringed are as
1.*fn1 A kit for the assembly of a modular bone
joint prosthesis for the replacement of a head, neck,
and adjacent portions of a bone, the kit comprising
at least two stems, with each stem sized for
insertion into a cavity of the bone, at least two
bodies, with each body sized to replace a portion of
the bone, and with each body configured to be joined
in fixed attachment to one of the at least two stems,
at least two head members, with each head member
sized to replace a head portion of the bone, and
means for fixedly attaching one of the at least two
head members to one of the at least two bodies.
11. The Kit of claim 1, wherein one of the at least
two stems has a different size and shape as another
of the at least two stems.
12. The Kit of claim 1, wherein one of the at least
two bodies has a different size and shape as another
of the at least two bodies.
13. The Kit of claim 11, wherein one of the at least
two bodies has a different size and shape as another
of the at least two bodies.
Zimmer argues that its product has no "means for fixedly
attaching" a head to a body, as specified by claim 1. DePuy alleges that Zimmer's product has a piece, an integrated body and
neck, that provides the means for attaching the body to a head.
An infringement analysis involves two steps. J&M Corp. v.
Harley-Davidson, Inc., 269 F.3d 1360, 1366 (Fed. Cir. 2001).
First, the court must, as a matter of law, determine the scope
and meaning of the claims through claim construction. Id.
Second, the properly construed claims must be compared to the
allegedly-infringing device. Id. A means-plus-function claim
limitation, such as the one challenged here, is subject to the
requirements of 35 U.S.C. § 112, ¶ 6. Odetics, Inc. v. Storage
Tech. Corp., 185 F.3d 1259, 1266 (Fed. Cir. 1999). "Literal
infringement of a § 112, ¶ 6 limitation requires that the
relevant structure in the accused device perform the identical
function recited in the claim and be identical or equivalent to
the corresponding structure in the specification." Id. at 1267.
Whether an accused device meets the requirements for equivalence
under § 112, ¶ 6 is a question of fact. Id. at 1268.
The function here is not in dispute: a means for fixedly
attaching a head to a body. However, the parties raise a question
of material fact as to the rest of the § 112, ¶ 6 test: the "way"
the structures in the '706 Patent and the accused device fulfill
the function (if at all), and the "result." See Odetics,
185 F.3d at 1267. Zimmer argues that the integrated body-neck offered
in its product is structurally and functionally different from
the integrated head-neck and separate neck options offered within the
specifications of the '706 Patent. DePuy offers testimony that
any differences are insubstantial, bringing the Zimmer device
within the range of § 112, ¶ 6 equivalents. This question of fact
is normally for the jury.
Zimmer argues, however, that DePuy has disclaimed the
integrated body-neck and cannot therefore now claim that such a
structure is within the scope of the '706 Patent. Claims may not
be expanded to include structures that were disclaimed, expressly
or implicitly. Scimed Life Sys., Inc. v. Adv. Cardiovascular
Sys., Inc., 242 F.3d 1337, 1345 (Fed. Cir. 2001). DePuy never
expressly disclaimed an integrated body-neck structure, but noted
the disadvantages of that option as compared to DePuy's preferred
option of a separate neck. DePuy's language merely points out the
advantages of its preferred embodiment of its invention, rather
than stating that prior embodiments were unsuited for or unable
to perform the function. This is neither an explicit nor an
implied disclaimer. Clearstream Waste Systems, Inc. v. Hydro
Action, Inc., 206 F.3d 1440, 1444 (Fed. Cir. 2000)
(means-plus-function language may cover prior art rather than
only an inventive structure disclosed in the patent, even though
the patent critically distinguishes the prior art). The '706
Patent is not limited solely to a configuration with a separate
neck; a configuration with an integrated head-neck is explicitly
within the scope of the claim, and a configuration with an integrated body-neck may well
be an equivalent structure. Zimmer's motion for summary judgment
that its ZMR Hip System does not infringe the '706 Patent is
Zimmer also moves for summary judgment on the ground that the
'706 Patent is invalid in light of prior art not disclosed to the
Patent Office. DePuy counters with a cross-motion, seeking
exclusion of the alleged prior art as a matter of law.
As a preliminary matter, DePuy moves to exclude a declaration
by Gabriele Lualdi, Mr. Lualdi's deposition testimony from
earlier litigation by DePuy over the '706 Patent, and certain
brochures, referred to as the "Lima LTO brochures" or "Lima
brochures" which are the subject of Mr. Lualdi's declaration and
deposition. DePuy argues that all three evidentiary sources
should be excluded as hearsay; if not, DePuy argues they should
be excluded as untimely disclosed.
While the declaration and deposition of Mr. Lualdi may
potentially be excluded from trial, Rule 56 provides that I may
consider affidavits and depositions in addition to the pleadings
and certain other materials when considering a motion for summary
judgment. FED. R. CIV. P. 56(c, e); Oto v. Metro. Life Ins.
Co., 224 F.3d 601, 604-05 (7th Cir. 2000). I may also
consider properly authenticated documents, such as the Lima LTO
brochures which are authenticated by Mr. Lualdi's testimony. Scott v. Edinburg,
346 F.3d 752, 760 n. 7 (7th Cir. 2003). For purposes of this
motion, I decline to exclude the Lualdi declaration and
deposition testimony on the ground of hearsay.
DePuy argues that these documents, proffered as proof of prior
art, should be excluded, regardless of their admissibility,
because they were untimely disclosed. DePuy first relies on Judge
Lindberg's oral statement of February 20, 2003, that evidence
timely disclosed is "in" and evidence untimely disclosed is
"out." However, both parties continued to disclose documents and
depose witnesses until well after the official close of discovery
on February 5, 2003. More importantly, Zimmer clearly identified
Mr. Lualdi and the documents he identified at his deposition in a
supplemental answer to interrogatories prior to the scheduled
close of discovery.
DePuy's claim that it has been prejudiced by untimeliness of
disclosure is belied by the record. The Lualdi Deposition was
taken on February 11, 1997 by the defendant in the case of
DePuy, Inc. v. Biomet, Inc. That litigation was also brought
for alleged infringement of the '706 Patent. Lawyers for DePuy
were present at the Lualdi Deposition and cross-examined the
deponent at length. Deposition Tr., Exhibit E to Elizabeth A
Werner's Declaration in Support of Zimmer's Memorandum in
Opposition to DePuy's Motion for Partial Summary Judgment on the
Lima LTO Brochures. DePuy's motion to exclude Mr. Lualdi's declaration and
deposition, and the Lima LTO brochures for untimeliness of
production is denied.
Zimmer's motion for summary judgment argues that the '706
Patent is invalid because prior art the Lima LTO brochures, a
brochure referred to by the parties as the "Kotz brochure", and
excerpts from a book by Dr. Edmund Yee-Su Chao not disclosed to
the Patent Office either anticipated or made obvious the
invention claimed by the '706 Patent. DePuy's cross-motion asks
the court to rule as a matter of law that the Lima LTO brochures
and the Kotz brochure are not prior art to the '706 Patent. DePuy
also argues that, to the extent any of Zimmer's sources are prior
art, Zimmer has not shown that the '706 Patent was not
anticipated or made obvious by them.
Zimmer argues that the '706 Patent should be held invalid
because of the "printed publication" bar, found in
35 U.S.C. § 102. Section 102 states:
A person shall be entitled to a patent unless (b)
the invention was patented or described in a printed
publication in this or a foreign country . . . more
than one year prior to the date of the application
for patent in the United States.
Zimmer and DePuy agree that the relevant date under the statute
is August 15, 1985. DePuy argues that the Lima LTO brochures and
another brochure, called "the Kotz brochure," do not qualify as "printed publications," and that there is insufficient
evidence of publication and distribution date.
Zimmer, as the proponent of the publication bar, must show by
clear and convincing evidence that the document in question was
sufficiently available to the public more than one year before
the date of application. Northern Telecom, Inc. v. Datapoint
Corp., 908 F.2d 931, 936 (Fed. Cir. 1990).
With respect to the Lima LTO brochures, DePuy relies on the
arguments for excluding the declaration and deposition of Mr.
Lualdi rejected above. The Lualdi deposition provides evidence
that at least 1,000 of the brochures were printed and that those
brochures were distributed to medical professionals and at
European scientific meetings and conventions more than a year
prior to August 15, 1985. DePuy's motion to strike and exclude
the Lima LTO Brochures for lack of proof of timeliness and extent
of publication is denied.
I agree, however, with DePuy's argument that the evidence
regarding publication of the Kotz brochure does not provide a
sufficient basis upon which to invalidate the '706 Patent under
the printed publication bar. Zimmer offers the testimony of Al
Zarnowski, a representative for Howmedica, the corporation that
produced the Kotz brochure. Mr. Zarnowski was designated as a
Rule 30(b)(6) witness for Howmedica, allowing him to testify not
only from his personal knowledge but also as to matters "known or reasonably available to the organization." Fed.R. Civ. P. 30 (b)
(6). Even with this expanded basis for testifying, Mr.
Zarnowski's testimony is not sufficiently clear and convincing to
allow the Kotz Brochure as a printed publication under § 102 or
to support a grant of summary judgment in favor of Zimmer. Mr.
Zarnowski testified as to his assumptions about the printing and
distribution of the Kotz brochure, but did not support those
assumptions with either personal knowledge or knowledge gained
from examining Howmedica's records or questioning other Howmedica
employees. Assumptions such as these do not provide clear and
convincing evidence of date and extent of publication. See,
e.g., AT&T Corp. v. Microsoft Corp., No. 01-C4872, 2004 WL
292321, at *6 (S.D.N.Y. Feb. 17, 2004); Aluminum Co. of Amer. v.
Reynolds Metal Co., No. 88-C6019, 1989 WL 165064, at *3-4 (N.D.
Ill. Dec. 21, 1989) (evidence that document might have been
available to the public insufficient). DePuy's motion for summary
judgment that the Kotz brochure is not a printed publication
under § 102 is granted.
Zimmer argues that the '706 Patent was anticipated or made
obvious by the Lima LTO brochures and the Chao excerpt. Patents
are presumed valid; Zimmer must show facts establishing
invalidity by facts supported by clear and convincing evidence.
35 U.S.C. § 282; Beckson Marine, Inc. v. NFM, Inc.,
292 F.3d 718, 725 (Fed. Cir. 2002). To show that a patent was anticipated
by prior art, Zimmer must show that the prior art contained every
limitation of the contested claims. Id. Anticipation is a question of fact.
DePuy argues that neither source teaches the "different size
and shape" limitation and therefore neither source anticipates
the '706 Patent. Zimmer argues in response that all three sources
reflect the different size and shape limitation. Both parties
present credible evidence regarding the teachings of the alleged
prior art, raising a question of fact for a jury to decide.
DePuy also argues that Zimmer has failed to offer any evidence
of motivation and therefore cannot establish a prima facie case
of obviousness. A patent is invalid for obviousness if the
teachings of the patent would have been obvious to a person
having ordinary skill in the relevant art, given the existence of
the prior art. Beckson, 292 F.3d at 725. To prevent the use of
hindsight in evaluating obviousness, the party challenging the
patent must show a motivation to combine or move beyond the prior
art. Id. at 727-28. While Zimmer provides evidence suggesting
that it would not have been difficult to move beyond the prior
art to the teachings of the '706 Patent, it provides no evidence
as to any motivation for doing so. Zimmer's motion for summary
judgment on the grounds of invalidity is denied.
Zimmer asserts an affirmative defense of inequitable conduct by
DePuy. DePuy moves for summary judgment on this defense, arguing that Zimmer cannot prove the intent element of the
defense. To establish the defense of inequitable conduct, Zimmer
must prove (1) the existence of material prior art; (2) DePuy's
knowledge of the prior art and its materiality; and (3) DePuy's
failure to disclose that prior art with intent to mislead. Fox
Indus. Inc. v. Structural Preservation Sys., 922 F.2d 801, 803
(Fed. Cir. 1991).
Zimmer states that DePuy knew of and failed to disclose the
Kotz brochure, the Lima LTO brochures, and Dr. Chao's book.
However, Zimmer only specified the Kotz brochure when it pleaded
the affirmative defense; it did not mention the other two pieces.
Inequitable conduct must be pleaded with particularity, pursuant
to Rule 9(b). FED. R. CIV. P. 9 (b); Safe Bed Tech. Co. v. KCI
USA, Inc., No. 02-C0097, 2003 WL 21183948, at *2 (N.D. Ill. May
20, 2003). As Zimmer only specified the Kotz brochure in its
pleading, but for the fact that DePuy raised all three references
itself in furtherance of its own motion for summary judgment, I
would not consider the other two references on this motion. They
do not alter the result.
Although Zimmer makes much of the fact that in certain cases,
courts have found inequitable conduct on the basis of indirect or
circumstantial evidence, the cases it cites for that proposition
were all ones in which the court found, on the basis of
admissions or undisputed evidence, that the parties responsible
for prosecuting the subject patent applications had actual
knowledge of relevant prior art that was not submitted to the patent office
during the period prior to issuance of the patents.*fn2
DePuy argues that Zimmer, despite vigorous examination of
witnesses in lengthy depositions and the availability of
transcript from relevant prior litigation, has not proved and
cannot prove that the individuals involved with the prosecution
of the '706 Patent had actual knowledge of any of Zimmer's
references prior to December 6, 1994, the date on which the '706
Patent issued. I agree.
Testifying in a prior litigation in 1996, all three inventors
stated that they had not seen the Lima LTO Brochures until at
least one year after the '706 Patent issued, and attorney Coffey
testified in this action that he had not seen the Lima LTO
Brochures until his preparation for a November 2002 deposition.
Similarly, there is no direct evidence offered by Zimmer to
establish that the three inventors or Mr. Coffey ever saw the
Chao Excerpt prior to issuance of the '706 Patent.*fn3 Under Zimmer's offered evidence, a jury could not find clear
and convincing evidence of an intent to deceive. DePuy's motion
for summary judgment on Zimmer's defense of inequitable conduct
DePuy seeks summary judgment on Zimmer's affirmative defense of
patent misuse*fn4 and its counterclaim for violation of the
antitrust laws. To the extent that the motion deals with the
misuse defense, both parties engage in a largely irrelevant
DePuy's contention is that to withstand summary judgment on the
defense and the counterclaim, Zimmer must raise a material issue
of fact with respect to both a relevant market and DePuy's monopoly power within that market. DePuy further points out that
Zimmer has not proffered any expert evidence. Zimmer argues that
DePuy fraudulently procured the '706 Patent and that, therefore,
no proof need be tendered on either issue, fraudulent
procurement*fn5 being a form of misuse in and of itself:
i.e., . . . "it amounts to extend[ing] the economic effect [of
the patent] beyond the scope of the patent grant." Zimmer
Memorandum in Opposition at 5, quoting from C.R. Bard, Inc. v.
M3 Systems, Inc., 157 F.3d 1340, 1372 (Fed. Cir. 1998). Zimmer
further contends that if proof of market power is required, it
may be found in the testimony of DePuy's own witnesses, including
With respect to the affirmative defense of patent misuse, no
analysis of market evidence is necessary, but not for the reason
Zimmer suggests. The record shows that prior to filing the
supplemental amended answer and counterclaims ("supplemental
amended answer") on March 17, 2004, Zimmer filed three other
iterations of an answer to the complaint.*fn6 In none of its
responsive pleadings, including the supplemental amended answer,
does Zimmer allege that the '706 Patent was "fraudulently
procured." On the contrary, Zimmer has consistently pleaded and argued that DePuy was guilty only of "inequitable conduct" in
obtaining the patent. The argument based on "fraudulent
procurement" comes too late (long after the close of discovery),
and is outside the pleadings. It is also not supported by the
In Part III above, I granted DePuy's motion for summary
judgment on Zimmer's affirmative defense of inequitable conduct
because of Zimmer's failure to raise a material issue of fact
with respect to intent to mislead the patent office. That defense
requires that its proponent show by clear and convincing evidence
that the patentee had knowledge of material prior art references
which it withheld from the patent examiner. Zimmer's opposition
to the inequitable conduct motion did not meet that standard of
proof. The threshold test for evidence of fraudulent procurement
is even higher. See Nobelpharma AB v. Implant Innovations,
Inc., 141 F.3d 1059, 1070 (Fed. Cir. 1998).
The evidence on which Zimmer relies in opposing summary
judgment on patent misuse is largely the same evidence on which
it relied in opposing summary judgment on the issue of
inequitable conduct. The only other matter to which it refers is
likewise inadmissible: DePuy brought law suits against three
third parties for infringement of the '706 Patent which were
settled by DePuy granting licenses to those defendants after the
defendants put the validity of the patent in issue. Zimmer argues
that by this conduct DePuy has somehow admitted invalidity. Title 35 U.S.C. § 271(d)
(3) specifically provides that
No patent owner otherwise entitled to relief for
infringement . . . shall be denied relief or deemed
guilty of misuse or illegal extension of the patent
right by reason of his having done one or more of the
following: . . . (3) sought to enforce his patent
rights against infringement or contributory
infringement . . .
I decline to infer any patent misuse from DePuy's litigation
history. DePuy's motion for summary judgment on Zimmer's
affirmative defense of patent misuse is granted.
DePuy also argues that summary judgment should be granted in
its favor on Zimmer's counterclaim of antitrust law violations
because Zimmer is unable to prove monopoly power on the part of
The offense of monopoly under § 2 of the Sherman Act
has two elements: (1) the possession of monopoly
power in the relevant market and (2) the willful
acquisition or maintenance of that power as
distinguished from growth or development as a
consequence of a superior product, business acumen,
or historic accident.
Goldwasser v. Ameritech Corp., 222 F.3d 390
, 396-97 (7th
Cir. 2000) (citing Eastman Kodak Co. v. Image Tech. Serv.,
Inc., 504 U.S. 451, 481 (1992)). Defining the relevant market is
an essential prerequisite to a showing of monopoly power. Golan
v. Pingel Enter., Inc., 310 F.3d 1360
, 1369 (Fed. Cir. 2002).
Such a market has two components: a relevant product market and a
relevant geographic market. Id. Zimmer, who bears the burden of
proof, claims that the relevant product market is the "modular revision
hip prosthesis" market.*fn7
DePuy argues that Zimmer has not met its burden on this issue,
primarily because Zimmer has presented no expert testimony
regarding the relevant market. While the Seventh Circuit has yet
to address this issue, a number of other circuits have held that
expert testimony is required as a matter of law on the complex
economic question of what constitutes a relevant market. See,
e.g., Bailey v. Allgas, Inc., 284 F.3d 1237, 1246 (11th Cir.
2002); Morgan, Strand, Wheeler & Biggs v. Radiology, Ltd.,
924 F.2d 1484, 1490 (9th Cir. 1991); Military Servs. Realty,
Inc. v. Realty Consultants of Va., Ltd., 823 F.2d 829, 832
(4th Cir. 1987). But see General Indus. Corp. v. Hartz
Mountain Corp., 810 F.2d 795 (8th Cir. 1987); Bacchus
Indus., Inc. v. Arvin Indust., 939 F.2d 887, 894 (10th Cir.
Even without adopting the rule of other circuits which require
expert testimony, Zimmer cannot withstand summary judgment. To
survive summary judgment, Zimmer must present "admissible
evidence that is sufficient for a jury to find that the proposed
relevant market [is] accurate." Menasha Corp. v. News America
Mktg. In-Store, Inc., 238 F. Supp. 2d 1024, 1033 (N.D. Ill.
2003). A relevant market is defined by "the reasonable
interchangeability of use or the cross-elasticity of demand between the product itself
and substitutes for it." Brown Shoe Co. v. United States,
370 U.S. 294, 325 (1962).
In support of its definition of the relevant market as the
"modular revision hip prosthesis" market, Zimmer offers the
testimony of one of its marketing officers, David Weidenbenner,
and experts from both DePuy and Zimmer who analyzed the issue of
damages from the alleged infringement, Creighton G. Hoffman and
Daniel M. McGavock.*fn8 Zimmer makes a number of conclusory
statements about how their chosen definition is appropriate as
representing a specific segment of the market, and that its
product is primarily used in that market. The reports of Mr.
Hoffman and Mr. McGavock, however, explain that there are two
types of hip prostheses, modular and non-modular, and two types
of surgery, primary and revision. Zimmer offers no evidence that
modular and non-modular prostheses are never interchangeable, nor
that modular prostheses are never used in primary surgeries. In
fact, the proffered report from Zimmer's expert suggests the
opposite that non-modular prostheses are used more frequently
in revision surgeries than modular prostheses, and that modular prostheses
are used in both primary and revision surgeries. This would argue
in favor of a broader definition of the relevant market than the
one suggested by Zimmer. Zimmer does not provide evidence from
which a jury could reasonably find that its narrow definition of
the relevant market is correct. DePuy's motion for summary
judgment on Zimmer's antitrust counterclaim is granted.
Zimmer's last motion seeks a ruling from this court as to its
obligations under a license for products under the '706 Patent
which it has allegedly obtained through the purchase of another
company, as well as the effects of that license on DePuy's
potential remedies for infringement.
Zimmer does not allege that it is the direct holder of the
license. As far as I can determine from the record, that license
is still the property of one of the corporate entities, all of
whose capital stock Zimmer now owns directly or indirectly.
Putting aside for the moment the question of whether Zimmer has
standing to assert the license as a defense, there is a
constitutional impediment to the court attempting to decide the
question Zimmer raises.
DePuy argues that the rulings Zimmer seeks would constitute an
advisory opinion. Article III of the United States Constitution
requires that a genuine case or controversy must exist before I
may issue an opinion. See, e.g. Continental Casualty Co. v. Southern
Co., 284 F. Supp. 2d 1118, 1121 (N.D. Ill. 2003). A genuine case
must be definite and concrete, touching the legal
relations of parties having adverse interests. It
must be a real and substantial controversy admitting
of specific relief through a decree of a conclusive
character, as distinguished from an opinion advising
what the law would be upon a hypothetical set of
Id. (citing Aetna Life Ins. Co. v. Haworth, 300 U.S. 227
While no bright line exists to separate genuine controversies
from advisory opinions, the ruling Zimmer seeks is more
consistent with the latter. Zimmer asks: if it holds this
license, and if Zimmer's product is held to infringe the '706
Patent, and if Zimmer refuses to mark its product or pay DePuy
royalties, what then happens under the terms of the license? This
sort of hypothetical situation leads to the advisory opinions I
must avoid under Article III. Zimmer's motion is denied.
For the reasons stated in this opinion, Zimmer's motions for
summary judgment of noninfringement and invalidity of U.S. Patent
No. 5,370,706 are denied. DePuy's motion to exclude consideration
of evidence by Gabriele Lualdi and the Lima LTO brochures is
denied. DePuy's motion to exclude consideration of evidence of
the Kotz brochure is granted. DePuy's motion for summary judgment
on Zimmer's affirmative defenses of inequitable conduct and
patent misuse and Zimmer's antitrust counterclaim are granted. Zimmer's
motions in limine with respect to its obligations under a license
and possible remedies are denied.