365 F. Supp. 3d 466
D. Del.2019Background
- Zimmer sued Stryker for infringement of reissued U.S. Patent No. RE44,920 (the '920 patent); Stryker counterclaimed for infringement of U.S. Patent No. 9,579,428 (the '428 patent).
- The '920 patent is a reissue of U.S. Patent No. 7,892,420 (the '420 patent) and claims priority to an original application filed March 4, 2002 (the '425 patent / '600 publication); Zimmer sought to add new claims via reissue.
- The '428 patent (issued 2017) concerns a removable intake manifold and features a claim term "receiver" at issue for construction and infringement against Zimmer products (Transposal UltrafleX and IntelliCart).
- Parties filed cross-motions for summary judgment on multiple patent validity and damages issues and numerous Daubert motions to exclude expert opinions; the court held a hearing and resolved many motions.
- The court (Andrews, J.) held: the '920 patent is entitled to the March 4, 2002 priority date; the asserted '920 claims survive several § 112, double-patenting, recapture, and anticipation challenges at summary judgment; genuine factual disputes preclude summary judgment on many invalidity and infringement questions; multiple expert opinions were excluded in part under Daubert/Rule 702 or as untimely under Rule 26.
Issues
| Issue | Zimmer's Argument | Stryker's Argument | Held |
|---|---|---|---|
| Priority date of '920 patent | Entitled to March 4, 2002 priority via chain to '425; reissue and certificate of correction cure intermediate defects | Priority chain broken by intervening '420 application that failed to reference original; alternate later priority dates | Granted to Zimmer: '920 entitled to March 4, 2002; certificate of correction/reissue preserved chain |
| Written description / §112 for '920 claims (incl. functional language "independently adjustable") | Original '425 disclosure supports claim elements; functional term is definite to POSITA | Lacks mechanism / written description; functional claiming indefinite under Halliburton | Denied Stryker summary judgment: genuine disputes exist on §112; "independently adjustable" not indefinite on its face |
| Obviousness-type double patenting / terminal disclaimer | '663 and '920 share priority and expiration; thus no double patenting | '920 allegedly extends term relative to '663 due to reissue; invalid for double patenting | Zimmer wins as matter of law: same priority/expiration; terminal disclaimer filed; no double patenting invalidity |
| Infringement and claim construction of '428 patent term "receiver" | "Receiver" is a means-plus-function term; Zimmer noninfringement under §112 ¶6 | Plain meaning is "receptacle"; should be construed structurally and Stryker can show infringement | Court construes "receiver" as "receptacle"; genuine factual disputes remain so summary judgment on infringement denied |
Key Cases Cited
- Celotex Corp. v. Catrett, 477 U.S. 317 (summary judgment burden shifting principles)
- Anderson v. Liberty Lobby, Inc., 477 U.S. 242 (genuine dispute / reasonable jury standard)
- Daubert v. Merrell Dow Pharm., 509 U.S. 579 (district court gatekeeper for expert admissibility)
- Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336 (Fed. Cir. 2010) (written description requirement explained)
- Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244 (Fed. Cir. 2008) (indefiniteness and improper functional claiming)
- Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555 (Fed. Cir. 1991) (written description / possession standard)
- PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299 (Fed. Cir. 2008) (CIP written description analysis)
- Halo Elecs., Inc. v. Pulse Elecs., Inc., 136 S. Ct. 1923 (enhanced damages / subjective willfulness standard)
- Rite-Hite Corp. v. Kelley Co., Inc., 56 F.3d 1538 (Fed. Cir. 1995) (entire market value/convoyed sales rule)