Kennedy and Gilman Contribute Chapter on Intellectual Property to New Jersey Federal Civil Procedure 2016
Partners Charles Kennedy and Keith Gilman have contributed their updated Chapter on Special Considerations in Cases Involving Intellectual Property for the just released New Jersey Federal Civil Procedure (2016). This publication has become a standard reference for litigation in New Jersey Federal district courts, used regularly by both judges and litigators. Kennedy and Gilman have authored the chapter on Intellectual Property since 1999.
Court Grants Howmedica Osteonics' Motion to Stay Further Proceedings Pending Patent Reexam
SYNTHES (U.S.A.) v. STRYKER CORP., Civil Action No. 06-5681-AB (E.D. Pa. Mar. 19, 2009). In this two-year-old patent infringement suit brought by Synthes (U.S.A.) against our client Stryker Corp. and its subsidiary, Howmedica Osteonics Corp., the district court granted our motion to stay further proceedings pending reexamination of Synthes' patent-in-suit, directed to a threaded insert for a bone plate screw hole. Reexamination of Synthes' patent by the United States Patent and Trademark Office was commenced in response to a request for reexamination filed on behalf of Howmedica Osteonics by our firm. In March 2008, the district court had issued a claim construction order broadly construing the patent's claims, which resulted in the request for reexamination. The stay was granted by the district court in the face of arguments by Synthes that the stay motion was a "transparent" attempt to unnecessarily delay the case.
Stryker's Jury Verdict against Synthes is Bolstered by Successful Reexamination of Orthopedic Patent on an External Fracture Fixation Device
In a trial in late 2006, we successfully tried the issues of validity and infringement before a jury in Newark, New Jersey in Stryker v. Synthes. The Stryker patent found infringed by the jury relates to the setting fractures with an external fixation system somewhat reminiscent of an erector set. After fighting off Synthes' post trial motions before the judge on, among other things, the validity of the asserted patent, we were faced with yet another validity challenge, this time the result of Synthes' petition for reexamination before the U.S. Patent and Trademark Office. With the depth of our litigation and prosecution experience, we presented evidence supporting our longstanding and judge and jury-tested position that the asserted patent was valid. In June 2008, the U.S. Patent and Trademark Office rendered a decision that Synthes' attack was not persuasive and that the patent claims held infringed would stand as previously issued and litigated.
Federal Circuit Delivers Blow To Tranquil
In a dispute over hip implant patents, a federal appellate court has affirmed a district court decision finding of noninfringement for a subsidiary of orthopedics company Stryker Corp., potentially killing rival Tranquil Prospects Ltd.'s infringement counterclaim. On Jan. 10, the U.S. Court of Appeals for the Federal Circuit issued a per curiam decision upholding the district court's summary judgment for the subsidiary, Howmedica Osteonics Corp. Oral argument in the case had been held the day before, on Jan. 9, according one attorney. The case began in May 2002, when Howmedica filed suit seeking a declaratory judgment of noninfringement and invalidity with respect to two patents owned by British Virgin Island-based Tranquil Prospects. Tranquil countersued for infringement. George C. Summerfield of Stadheim & Grear Ltd., which is representing Tranquil, said Monday that his client was contemplating a request for a rehearing. “I was very pleased with the ruling, because in my view it's the last nail in the coffin of this case, which we've always maintained had no basis,” said William L. Mentlik of Lerner, David, Littenberg, Krumholz & Mentlik LLP, which is representing Howmedica. He added, “Although Tranquil has the right to petition for rehearing and/or rehearing en banc, in the case of a per curiam affirmance, the likelihood of a successful petition is virtually nonexistent.” In March 2007, a judge in the U.S. District Court for the Northern District of Indiana found that Tranquil’s assertions of infringement, which were backed by an unsworn expert declaration and “virtual surgery” geared toward demonstrating that implanting Howmedica’s stem implants would infringe on Tranquil’s patented methods, weren’t up to snuff. At issue in the suit are two patents, both of which are entitled “Implantation of Articulating Joint Prosthesis.” Tranquil contended that a variety of Howmedica’s “hip stems,” which connect the femur to the hip socket, encroached on its intellectual property. “We were surprised. We understood the Howmedica attorney to have conceded at oral argument that the judge's claim construction on the medullary canal was incorrect, one of the main issues of the appeal,” Summerfield said Monday. But Mentlik, who represented Howmedica at oral argument, disputed this. “I did not concede anything of the sort,” he said. “What I said was that as a matter of anatomy, the medullary canal doesn't extend the entire length of a longbone. In the context of this particular patent, the judge was justified in construing the limitation as he did.” “Under any construction, they had to lose,” he added. The case stretched on as long as it did in part because of an appeal by Tranquil, which followed the district court’s January 2004 finding that the asserted claims of disputed patents were invalid. The Federal Circuit Court breathed new life into the case in 2005, reversing the lower court’s ruling that the Tranquil’s patent claims were indefinite and invalid, vacating the lower court’s ruling that one patent was not infringed because that ruling was based on an “erroneous claim construction,” and remanding the case back to district court. The patents in dispute are U.S. Patent Numbers 4,636,214 and 5,222,985. Tranquil is represented in this matter by Stadheim & Grear Ltd. and Hunt Suedhoff Kalamaros LLP. Howmedica is represented by Lerner, David, Littenberg, Krumholz & Mentlik LLP. The case is Howmedica Osteonics Corp. v. Tranquil Prospects Ltd., case number 2007-1358,in the U.S. Court of Appeals for the Federal Circuit. --Additional reporting by Ben James
Stryker Unit Wins Summary Judgment In Patent Case
In a move that could mark the resolution of a patent infringement suit over hip implant technology that has lasted almost five years, a court has granted summary judgment to a subsidiary of orthopedics company Stryker Corp. U.S. District Judge Allen Sharp on Wednesday signed off on an order granting summary judgment of noninfringement to plaintiff Howmedica Osteonics Corp., rejecting a summary judgment motion by Tranquil Prospects Ltd. Judge Sharp’s ruling could be appealed, but at the district court level, the case is essentially over, said William L. Mentlik, managing partner of the firm Lerner, David, Littenberg, Krumholz & Mentlik, LLP and lead counsel for Howmedica. We feel pretty good about it, Mentlik said of the decision, adding that he was confident that the ruling would hold up if appealed. Judge Sharp held that Tranquil’s assertions of infringement, which were backed by an unsworn expert declaration and virtual surgery geared toward demonstrating that implanting Howmedica’s stem implants would infringe on Tranquil’s patented methods, weren’t up to snuff. This curt declines the apparent invitation to engage in a fishing expedition and issue a catchall opinion, Judge Sharp wrote, after noting that Tranquil's expert failed to identify specifically which Howmedica prostheses infringed the patents-in-suit. Judge Sharp goes on to quote from a Seventh Circuit decision from 1991, in a case captioned United States v. Dunkel: A skeletal argument, really nothing more than an assertion, does not preserve a claim…Judges are not like pigs, hunting for truffles buried in briefs. Howmedica asked the court for summary judgment of noninfringement of four claims of the 985 patent and one claim of the 214 patent, while Tranquil sought summary judgment of direct literal infringement of four claims of the 985 patent. Tranquil also argued that it was entitled to summary judgment that the asserted claims of the 985 patent were not anticipated by putative prior art. In May 2002, Howmedica filed suit seeking a declaratory judgment of noninfringement and invalidity with respect to two patents owned by British Virgin Island-based Tranquil Prospects. Tranquil prospects countersued for infringement. At issue in the suit are U.S. Patent No 636,214 and 5,222,985—both of which are entitled Implantation of Articulating Joint Prosthesis Tranquil contended that a variety of Howmedica’s hip stems, which connect the femur to the hip socket, encroached on its intellectual property. More than 20 Howmedica’s hip stems, including the Omnifi and Strata, infringed, Tranquil alleged. The case stretched on as long as it did in part because of an appeal by Tranquil, which followed the district court's January 2004 finding that the asserted claims of the 985 and 214 patents were invalid. The U.S. Court of Appealsfor the Federal Circuit breathed new life into the case in 2005, reversing the lower court's ruling that the Tranquil’s patent claims were indefinite and invalid, vacating the lower court’s ruling that the 985 patent was not infringed because that ruling was based on an “erroneous claim construction, and remanding the case back to the northern Indiana district court. Attorneys for Tranquil Prospects Ltd. could not be immediately reached for comment. Tranquil is represented in this matter by Stadheim & Grear Ltd. and Hunt Suedhoff Kalamaros LLP. Howmedica is represented by Lerner, David, Littenberg, Krumholz & Mentlik, LLP. The case is Howmedica Osteonics Corp. v. Tranquil Prospects Ltd., case number 02-321,in the U.S. District Court for the Northern District of Indiana. By Ben James, firstname.lastname@example.org.