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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


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 and remedies.

  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 follows:
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 denied.


  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 ...

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