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Acantha LLC v. Depuy Orthopaedics Inc.

United States District Court, E.D. Wisconsin

May 19, 2018

ACANTHA LLC, Plaintiff,
v.
DEPUY ORTHOPAEDICS INC., et al., Defendants.

          DECISION AND ORDER GRANTING-IN-PART ACANTHA'S MOTION FOR RECONSIDERATION

          William C. Griesbach, United States District Court Chief Judge

         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). Presently before the court is Acantha's motion for reconsideration of the court's orders granting partial summary judgment on infringement and limiting damages. ECF Nos. 213-14. For the following reasons, the motion will be granted-in-part.

         LEGAL STANDARD

         A motion for reconsideration serves a very limited purpose in federal civil litigation. It should only be used “to correct manifest errors of law or fact or to present newly discovered evidence.” Rothwell Cotton Co. v. Rosenthal & Co., 827 F.2d 246, 251 (7th Cir. 1987) (quoting Keene Corp. v. Int'l Fidelity Ins. Co., 561 F.Supp. 656, 665-66 (N.D. Ill. 1976), aff'd 736 F.2d 388 (7th Cir. 1984)). “A ‘manifest error' is not demonstrated by the disappointment of the losing party. It is the ‘wholesale disregard, misapplication, or failure to recognize controlling precedent.'” Oto v. Metro. Life Ins. Co., 224 F.3d 601, 606 (7th Cir. 2000) (quoting Sedrak v. Callahan, 987 F.Supp. 1063, 1069 (N.D. Ill. 1997)). Such motions are disfavored and should be “rare.” Bank of Waunakee v. Rochester Cheese Sales, Inc., 906 F.2d 1185, 1191 (7th Cir. 1990).

         At the same time, “a motion for reconsideration performs a valuable function where ‘the Court has patently misunderstood a party, or has made a decision outside the adversarial issues presented to the Court by the parties, or has made an error not of reasoning but of apprehension.'” Id. (quoting Above the Belt, Inc. v. Mel Bohannan Roofing, Inc., 99 F.R.D. 99, 101 (E.D. Va. 1983)). “Reconsideration is a useful mechanism when the court has clearly erred and immediate correction will save time and expense in the long run.” Eivaz v. Edwards, No. 12-cv-910, 2015 WL 59347, at *1 (E.D. Wis. Jan. 5, 2015).

         ANALYSIS

         On April 25, 2018, the court granted Defendants' motions for partial summary judgment on infringement, finding that Defendants' Vectra and Zero-P VA products did not directly infringe the ‘008 Patent and that the Zero-P VA does not infringe the ‘008 Patent because it does not include a biased stopping member or anterior and posterior surfaces. It also granted Defendants' motion for partial summary judgment based on Acantha's failure to mark in accordance with 35 U.S.C. § 287(a). Acantha maintains that, in granting Defendants' motions, the court erred in a number of ways. The court will address each argument in turn.

         A. No Direct Infringement

         Acantha requests that the court reconsider its conclusion that no accused product directly infringes the ‘008 Patent. First, it argues that the court improperly concluded that the preamble limited the claims. In its decision, the court found that the term “assembly” is a claim limitation because it recites essential elements of the invention pertaining to its structure. That is, to make sense of the body of the claim, all three elements of the orthopedic implant assembly-the stabilizing element, the stopping member, and the securing element-must be assembled to meet the limitations of the claim. After further consideration, however, the court finds that the body of the claims set out the complete invention. Therefore, the preamble does not constitute a limitation as it is not necessary to give life, meaning, and vitality to the claim. See Schumer v. Lab. Computer Sys., Inc., 308 F.3d 1304, 1310 (Fed. Cir. 2002) (where the body of the claim sets out the complete invention, the preamble is not ordinarily treated as limiting the scope of the claim). Instead, the preamble merely gives a name to a structurally complete invention. See IMS Tech., Inc. v. Haas Automation, Inc., 206 F.3d 1422, 1434 (Fed. Cir. 2000) (“The phrase ‘control apparatus' in the preamble merely gives a descriptive name to the set of limitations in the body of the claim that completely set forth the invention.”).

         In addition, to make sense of the language in various claims, assembly cannot be treated as a limitation. Some claims describe certain characteristics of the device before it is assembled. For instance, claim 3 discusses a stopping member “configured to be displaceable . . . .” ‘008 Patent col. 8 l. 25. Claim 13 considers a stabilizing element that is “configured to conform to and extend between at least two bone segments.” Id. col. 9 ll. 5-7. The language in these claims, and others, are inconsistent with the notion that the device must be assembled in every claim.

         Finally, there is no clear indication that Acantha relied on the preamble during prosecution to distinguish the patent from prior art. Defendants asserted in their brief in support of their motion for summary judgment that the PTO rejected one of the claims in Acantha's reissue application, which was directed to an orthopedic attachment member, in light of the Errico reference. In response to the rejection, Acantha amended the claim by adding another component and changing the preamble language from “member” to “assembly.” ECF No. 193 at 5. But this prosecution history fails to show clear reliance on the preamble language to distinguish the invention from prior art. See Symantec Corp. v. Computer Assocs. Intern., Inc., 522 F.3d 1279, 1288 (Fed. Cir. 2008) (“Absent clear reliance on the preamble in the prosecution history, . . . the preamble ‘generally is not limiting.'” (quoting Catalina Marketing Int'l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002)). Acantha changed not only the preamble but also substantial portions of the body of the claim to explain how the invention is different from the Errico reference. For these reasons, the court finds that the preamble is not a claim limitation and does not require that complete assembly is required.

         Acantha also asserts that the court failed to address whether Defendants sell assembled products. As explained in the court's order, the screws for the accused products are provided separately from the plates because the products are compatible with various screw types. Prior to surgery, a variety of plates and screws are removed from their packaging and placed on a tray for the surgeon to choose which product to use. After the surgery, the hospital submits an invoice for the components that were actually used by the surgeon. ECF No. 213 at 4-5. Although 35 U.S.C. § 271 does not define “sell, ” the Federal Circuit has explained that the “definition of ‘sale' is: ‘1. The transfer of property or title for a price. 2. The agreement by which such a transfer takes place. The four elements are (1) parties competent to contract, (2) mutual assent, (3) a thing capable of being transferred, and (4) a price in money paid or promised.'” NTP, Inc. v. Research In Motion, Ltd., 418 F.3d 1282, 1319 (Fed. Cir. 2005) (quoting Black's Law Dictionary 1337 (7th ed. 1999)). Defendants maintain that the accused products are sold, for the purposes of § 271, when they are provided to the hospital in their unassembled state, regardless of when the money actually changes hands. Conversely, Acantha contends that the sale occurs when the product is used in surgery and the hospital subsequently submits an invoice to Defendants. But the record does not contain any evidence explaining what the distribution agreements between Defendants and the hospitals actually are. Even if the hospital invoices Defendants, it is unclear when the hospital promises to pay for the product. The court concludes a dispute of fact exists as to how the accused products are actually sold.

         Finally, Acantha contends the court erred in concluding Defendants do not directly infringe claims 21, 36, and 37, which are method claims. In its decision, the court concluded Defendants do not infringe these method claims during testing because they do not position a stabilizing element against the surface of a living patient's bone. Acantha asserts the court erred in construing the word “patient” to mean a “living patient.” But to suggest that patient means anything other than a living being is absurd. The dictionary definition of the word “patient” is “an individual awaiting or under medical care and treatment” or “the recipient of any of various personal services.” Webster's Collegiate Dictionary (10th ed. 1998). Plaintiff asserts “patient” means “the recipient of any of various personal services.” ECF No. 247 at 16 (citing Volk v. Ace Am. Ins. Co., 748 F.3d 827, 828-29 (8th Cir. 2014) (quoting Webster's Third New Int'l Dictionary 1655 (1981))). Even this definition requires that a patient be a person or thing that receives personal services, however. A cadaver or dummy spine cannot be the recipient of these services. In short, the court's decision that Defendants do not directly infringe these method claims remains sound.

         Accordingly, Acantha's motion for reconsideration will be granted in part and denied in part. The motion is granted insofar as the court vacates its award of summary judgment in favor of Defendants with respect to no direct infringement of claims 3, 9, 59, 63, 72, 79, and 85 of the ‘008 Patent. The motion is denied with respect to claims 21, ...


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