United States District Court, E.D. Wisconsin
DECISION AND ORDER GRANTING DEFENDANTS' MOTION
FOR PARTIAL SUMMARY JUDGMENT LIMITING DAMAGES BASED ON
FAILURE TO MARK PURSUANT TO 35 U.S.C. § 287(A)
William C. Griesbach, Chief Judge United States District
action for patent infringement, Plaintiff Acantha LLC accuses
Defendants DePuy Synthes Sales, Inc., DePuy Synthes Products
Inc., DePuy Synthes Inc., Johnson & Johnson Inc., Synthes
Inc., Synthes USA LLC, DePuy Orthopaedics Inc., and DePuy
Spine LLC of infringing its patent, U.S. Reissued Patent No.
RE43, 008 (the ‘008 Patent). In particular, Acantha
asserts Defendants' Vectra and Zero-P VA products
infringe on the ‘008 Patent. Presently before the court
is Defendants' motion for partial summary judgment
limiting damages based on Plaintiff's failure to mark
pursuant to 35 U.S.C. § 287(a). For the following
reasons, the motion will be granted.
patent-in-suit initially issued as U.S. Patent No. 6, 261,
291 (the ‘291 Patent) on July 17, 2001 but was later
reissued as U.S. Patent No. RE43, 008. In March 2002, David
Talaber, one of the patent's inventors, sent letters to
several medical device companies, including several defendant
entities and their predecessors, notifying them of
Acantha's intellectual property as well as the types of
products it covered and inquiring into their interest in
licensing the technology. Pl.'s Proposed Findings of Fact
(PPFOF) ¶ 28, ECF No. 176. In subsequent discussions
with product development personnel at Synthes Spine and DePuy
Orthopaedics that lasted through May 2002, Talaber expressed
Acantha's interest in licensing the patent. Nisra
Thongpreda and Kelly Baker as well as Dr. Jorge Ochoa
participated in these meetings on behalf of Synthes Spine and
DePuy Spine, respectively. Id. ¶ 30. Both
entities did not plan to use the invention at that time.
Id. Thongpreda subsequently attended a meeting to
brainstorm a new “rotational” plate system with
Synthes' anterior cervical spine team in May 2002. This
system later became Defendants' Vectra product and was
submitted for patent clearance in December 2002. Id.
2003, Acantha entered into an exclusive license agreement for
the ‘291 Patent, including any reissue of that patent,
with Stryker Spine SA. Pursuant to the agreement, Acantha
allowed Stryker to manufacture and sell products under the
patent. The agreement only identified Stryker's Reflex
product as a licensed product. Stryker agreed to mark the
covered product's packaging: “Beginning . . . after
the execution of this Agreement and at all time s thereafter,
the Licensed parties shall place, in a conspicuous location
on the packaging for the Products . . . the words ‘U.S.
Patent No(s).' followed by the number(s) corresponding to
the relevant U.S. Letter(s) Patent, subject to the reasonable
approval of Licensor.” Id. ¶ 37.
Talaber and Dr. James Lloyd, the inventors of the patent,
held numerous meetings with DePuy Spine personnel in 2006, to
discuss the patent, how a license could benefit DePuy's
spinal products, and the reissue proceedings for the patent.
During one of the meetings, a DePuy executive noted that
DePuy believed the Vectra product manufactured by Synthes
infringed Acantha's intellectual property. Dr. Lloyd
confirmed that Acantha was aware of that product.
Id. ¶ 34. At this time, DePuy Spine was a
division of Johnson & Johnson but had not yet merged with
Synthes. Id. ¶ 33. On April 26, 2011, Johnson
& Johnson and Synthes executed a merger agreement to
combine DePuy and Synthes. The merger was finalized on June
14, 2012. Id. ¶ 35.
2013, Acantha and Stryker amended the license agreement so
that Stryker had a nonexclusive license, rather than an
exclusive license, for the patent. The parties reaffirmed
Stryker's obligation to mark the products that were
subject to the agreement. Id. ¶ 47. This
agreement not only identified Reflex as a licensed product
but also listed several other products as licensed products,
including the Reflex Hybrid, the Reflex Zero-Profile, and the
Dynatran. On March 19, 2014, Olivia Luk, an attorney
representing Acantha, wrote to attorneys for Defendants and
provided representative claim charts asserting that
Defendants' Vectra and Zero-P VA products were covered by
the claims of the ‘008 Patent. Defs.' Proposed
Findings of Fact (DPFOF) ¶ 25, ECF No. 157.
their motion for partial summary judgment, Defendants argue
that Acantha is limited to recovering damages as of March 19,
2014, the date Defendants received claim charts asserting
their products violated Acantha's patent. Defendants
assert that they did not receive “actual notice”
of infringement until that date and that they did not receive
“constructive notice” of infringement because
Acantha and Stryker did not mark the patented products or
their packaging labels in accordance with 35 U.S.C. §
287(a). In response, Acantha maintains that it expected
Stryker, a sophisticated company experienced in licensing, to
comply with this provision. PPFOF ¶ 38. Acantha states
that one or more Acantha members met with Stryker
representatives in person regularly and had telephone
conversations with them occasionally about Stryker's
marking obligations. Stryker confirmed multiple times that it
complied with the agreement's marking provisions.
Id. ¶ 40. As early as 2004, Stryker listed
Acantha's patent number on the surgical technique guides
for the licensed Reflex products. Id. ¶ 42.
These technique guides, Acantha notes, are distributed to
hospitals and at trade shows and are published on
Stryker's website. Surgeons view and use the technique
guides during the surgeries in which the device is used.
Id. ¶ 43. Acantha states it reviewed the
technique guides, noted the guides contained the Acantha
patent number, and confirmed Stryker's oral
representations that the licensed products were being marked.
Id. ¶ 46.
addition, Acantha states that the Reflex Zero-Profile, the
Reflex Hybrid, and the Dynatran were updated with marking on
their packaging at least as of July 31, 2013. Id.
¶ 50. Defendants acknowledge that the label change was
approved on July 31, 2013 but contend there is no evidence
that all packaging on the products being sold was upDated:
that time. Defendants also argue that the Aviator, which was
released in 2010, and the Anchor-C, which was released in
2011, were covered products that Stryker had an obligation to
mark but failed to do so. Acantha denies that these products
were covered by the patent and, therefore denies that Stryker
was never required to mark them.
judgment is appropriate when the moving party shows that
there is no genuine issue as to any material fact and that
the moving party is entitled to judgment as a matter of law.
Fed.R.Civ.P. 56(a). All reasonable inferences are construed
in favor of the nonmoving party. Foley v. City of
Lafayette, 359 F.3d 925, 928 (7th Cir. 2004). The party
opposing the motion for summary judgment must “submit
evidentiary materials that set forth specific facts showing
that there is a genuine issue for trial.” Siegel v.
Shell Oil Co., 612 F.3d 932, 937 (7th Cir. 2010)
(citations omitted). “The nonmoving party must do more
than simply show that there is some metaphysical doubt as to
the material facts.” Id. Summary judgment is
properly entered against a party “who fails to make a
showing sufficient to establish the existence of an element
essential to the party's case, and on which that party
will bear the burden of proof at trial.” Parent v.
Home Depot U.S.A., Inc., 694 F.3d 919, 922 (7th Cir.
2012) (internal quotations omitted).
argue that Acantha and its licensee, Stryker, failed to mark
substantially all of the products covered by the ‘008
Patent or their packaging with the patent number in
accordance with 35 U.S.C. § 287(a). The marking statute
Patentees, and persons making, offering for sale, or selling
within the United States any patented article for or under
them, or importing any patented article into the United
States, may give notice to the public that the same is
patented, either by fixing thereon the word
“patent” or the abbreviation “pat.”,
together with the number of the patent, or by fixing thereon
the word “patent” or the abbreviation
“pat.” together with an address of a posting on
the Internet, accessible to the public without charge for
accessing the address, that associates the patented article
with the number of the patent, or when, from the character of
the article, this can not be done, by fixing to it, or to the
package wherein one or more of them is contained, a label
containing a like notice. In the event of failure so to mark,
no damages shall be recovered by the patentee in any action
for infringement, except on proof that ...