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 ...