ORDER CONCERNING MOTIONS FOR SUMMARY JUDGMENT OF INFRINGEMENT/NON-INFRINGEMENT AND INVALDITY AND MOTION TO DISMISS
JON P. McCALLA, District Judge.
This case concerns alleged infringement of United States Patent No. 6,955,677 (the "'677 Patent"). Before the Court is Plaintiffs Anglefix, LLC and the University of North Carolina (collectively, "Plaintiffs")'s Motion for Partial Summary Judgment of Infringement on Apparatus claims 11, 12, 33, 34, 47, 48, 65 and 66 of the '677 Patent. Defendant Wright Medical Technology, Inc. opposed. (ECF No. 165.) Also before the Court is Defendant's Motions for Summary Judgment of Invalidity (ECF No. 155) and of Non-Infringement of the `677 Patent (ECF No. 157). Plaintiffs filed responses in opposition. (ECF Nos. 197-98.) Defendant replied. (ECF Nos. 208-09.)
For the reasons stated below, the Court DENIES Plaintiff's Motion for Partial Summary Judgment on Infringement; DENIES Defendant's Motion for Summary Judgment of Invalidity; and GRANTS in part and DENIES in part Defendant's Motion for Summary Judgment of Non-Infringement. The Court also DENIES Defendant's Motion to Dismiss.
A. Factual Background
This case involves the alleged infringement of the following patent on a "multi-angular plate and screw system," developed by Dr. Laurence E. Dahners (Compl., ECF No. 1 ¶ 5):
B. Procedural Background
The Complaint for this action was filed by Plaintiff Anglefix, LLC on June 11, 2013. (ECF No. 1.) On September 20, 2013, Defendant filed an Answer to the Complaint and Counterclaims. (ECF No. 7.) On April 14, 2014, Defendant filed a petition with the United States Patent and Trademark Office ("PTO") for inter partes review ("IPR") before the Patent Trial and Appeal Board ("PTAB") seeking review of the '677 Patent. (ECF No. 21-1 at 2.) Defendant's petition was filed one week after the PTO granted IPR for the '677 Patent in the parallel case,
On June 26, 2014, Defendant filed a Motion to Stay Pending IPR. (
On July 15, 2014, both parties filed opening claim construction briefs. (ECF Nos. 23, 24.) On August 15, 2014, both parties filed responsive claim construction briefs. (ECF Nos. 32, 33.) The parties filed a Joint Claim Construction and Prehearing Statement on August 29, 2014. (ECF No. 34.) On October 7, 2014, the Claim Construction Hearing was reset to November 14, 2014. (ECF No. 39.) On the same day, Plaintiff Anglefix, LLC filed notice with the Court that the PTO had granted Defendant's IPR with regard to twenty-seven of the thirty-nine '677 Patent's claims. (ECF No. 40 at 1.) On October 8, 2014, the Court ordered the parties to file a Joint Status Report in light of the PTO's decision to grant IPR. (ECF No. 41.) The parties filed the Joint Status Report on October 15, 2014. (ECF No. 42.) The Court granted the Motion to Stay Pending IPR on October, 22, 2014. (ECF No. 44.)
On March 29, 2015, Plaintiff Anglefix, LLC filed a Motion to allow Plaintiff to voluntarily withdraw the twenty-seven claims under IPR and to lift the stay pending IPR on the remaining twelve claims ("Motion to Lift the Stay Pending IPR"). (ECF No. 45.) Defendant filed its Response in Opposition on April 9, 2015. (ECF No. 46.) On May 6, 2015, the Court filed an Order for Clarification as to whether the withdrawal of the twenty-seven claims would be with prejudice. (ECF No. 47.) On May 21, 2015, Plaintiff Anglefix, LLC filed Notice with the Court that the withdrawal of the claims would be with prejudice. (ECF No. 48.) The Court denied the Motion to Lift the Stay Pending IPR on June 12, 2015. (ECF No. 49.) On July 6, 2015, Defendant filed the Judgment and Final Written Decision in the IPR by PTAB. (ECF No. 50.) The decision was based on the patent owner's disclaiming of all the claims under review by PTAB. (
On July 17, 2015, Plaintiff Anglefix, LLC filed an Answer to Defendant's counterclaims, denying Defendant's allegations of non-infringement and invalidity. (ECF No. 53.)
On September 28, 2015, the Court held a Claim Construction Hearing. (ECF No. 67.) On October 5, 2015, Defendant filed a Supplemental Claim Construction Brief on the use of the word "permanent" in Defendant's construction of the terms "tap," "tapped," or "tapping." (ECF No. 70.) On October 12, 2015, Plaintiff filed a responsive post-hearing brief. (ECF No. 71.) On December 30, 2015, the Court entered its Order Following Claim Construction Hearing. (ECF No. 93.) The Court construed the following five terms:
On April 25, 2016, Defendant filed a motion for summary judgment for lack of standing. (ECF No. 130.) Plaintiff Anglefix responded in opposition on May 11, 2016. (ECF No. 146.) Defendant filed a reply brief on May 31, 2016. (ECF No. 153.) The Court held a motion hearing on June 21, 2016. (Min. Entry, ECF No. 164.)
Plaintiff Anglefix filed a motion for summary judgment of infringement on May 23, 2016. (ECF No. 150.) Defendant filed a Motion to Strike the Expert Reports of Matthew Davies and Preclude Him from Offering Expert Testimony in this Case on May 31, 2016. (ECF No. 154.) Plaintiff filed a response in opposition on June 26, 2016. (ECF No. 170.)
On June 27, 2016, the Court denied Defendant's motion for summary judgment for lack of constitutional standing, but granted summary judgment for lack of prudential standing. (ECF No. 169.) The Court afforded Plaintiff Anglefix thirty days to join the rightful patent owner, the University of Northern Carolina ("UNC"). (
On July 25, 2016, AngleFix filed a motion, not to join UNC as a co-plaintiff, but to use a Waiver of Claims (hereinafter "the Waiver" or "UNC's Waiver") from UNC as a substitute for joinder. (ECF No. 171.) Defendant responded in opposition on July 27, 2016. (ECF No. 172.) On August 2, 2016, the Court denied AngleFix's motion to accept UNC's Waiver in place of the joinder of UNC as a party in the instant litigation. (ECF No. 175.)
On September 15, 2016, AngleFix filed a motion to join UNC as a co-plaintiff. (ECF No. 176.) Defendant opposed the motion on October 5, 2016. (ECF No. 180.) Anglefix filed a reply on October 14, 2016 (ECF No. 183), and Defendant filed a sur-reply with leave of Court on October 18, 2016 (ECF No. 186). On November 3, 2016, the Court held a telephonic motion hearing. (Min. Entry, ECF No. 189.)
On November 15, 2016, the Court entered an Order Granting Plaintiff's Motion to Intervene, Denying Defendant's Motion for Summary Judgment for Lack of Standing, and Lifting Stay. (ECF No. 191.)
On November 23, 2016, Defendant sought leave to file a reply in support of its Motion to Strike the Expert Reports of Matthew Davies and Preclude Him from Offering Expert Testimony in this Case (ECF No. 154). (ECF No. 195.) The Court granted leave on December 2, 2016. (ECF No. 201.) On December 5, 2016, Plaintiff, along with newly joined co-plaintiff UNC, moved for leave to file a sur-reply to Defendant's reply concerning Expert Matthew Davies. (ECF No. 203.) Defendant filed a response in opposition to this request, stating that Plaintiffs failed to comport with multiple local rules, e.g., failure to consult prior to filing, and that Plaintiffs' motion failed to cite any authority. (ECF No. 205.)
On December 15, 2016, Defendant filed its Reply Memorandum in Support of its Motion for Summary Judgment of Non-Infringement of U.S. Patent No. 6,995,677 (ECF No. 157). (ECF No. 208.) The same day, Defendant filed its Reply to its Motion For Summary Judgment of Invalidity (ECF No. 155). (ECF No. 209.)
The Court held a Telephonic Status Conference on December 21, 2016. (Min. Entry, ECF No. 210.) The same day, the Court entered an Order Setting Schedule for Amended Complaint and Pending Motions Hearing. (ECF No. 212.) On January 18, 2017, Plaintiffs Anglefix and UNC filed an Amended Complaint, which brought the same claims as the original Complaint (ECF No. 1), but included UNC as a party. (ECF No. 216.) The Court held a motions hearing on January 31, 2017. (Min. Entry, ECF No. 219.)
On February 1, 2017, Defendant filed a Motion to Dismiss for failure to state a claim. (ECF No. 221.) Plaintiffs filed a response in opposition on February 15, 2017. (ECF No. 226.)
II. LEGAL STANDARD
A party is entitled to summary judgment "if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law." Fed. R. Civ. P. 56(a). "A fact is `material' for purposes of summary judgment if proof of that fact would establish or refute an essential element of the cause of action or defense."
"In considering a motion for summary judgment, [the] court construes all reasonable inferences in favor of the nonmoving party."
"Once the moving party satisfies its initial burden, the burden shifts to the nonmoving party to set forth specific facts showing a triable issue of material fact."
To "show that a fact is, or is not, genuinely disputed," both parties must do so by "citing to particular parts of materials in the record," "showing that the materials cited do not establish the absence or presence of a genuine dispute," or showing "that an adverse party cannot produce admissible evidence to support the fact."
"The court need consider only the cited materials, but it may consider other materials in the record." Fed. R. Civ. P. 56(c)(3). "[T]he district court has no `duty to search the entire record to establish that it is bereft of a genuine issue of material fact.'"
The decisive "question is whether `the evidence presents a sufficient disagreement to require submission to a jury or whether it is so one-sided that one party must prevail as a matter of law.'"
Defendant seeks summary judgment of invalidity based on its contention that the claims remaining after two IPRs
(ECF No. 155-1 at PageID 5104;
Plaintiffs contend the PTAB squarely addressed this issue during IPR proceedings. Specifically, Plaintiff highlights that the PTAB examined Wolter '889 in light of other references and declined to institute inter partes review because Defendant had not established a reasonable likelihood that the "plurality of protrusions" and "plurality of interstices between the protrusions" requirements of the remaining claims were disclosed. (ECF No. 199 at PageID 6611.)
Patents are presumed to be valid. 35 U.S.C. § 282(a). A party challenging the validity of a patent bears the burden of proving invalidity by clear and convincing evidence.
An anticipation inquiry involves two steps. First, the court must construe the claims of the patent in suit as a matter of law. Second, the finder of fact must compare the construed claims against the prior art.
Two central elements of all the claims at issue are the "plurality of protrusions" and "plurality of interstices between the protrusions" requirements. The '677 Patent refers to these protrusions and interstices in the specification. The Court adopted the parties' constructions for these terms, finding "interstices" to mean "spaces" and "protrusion" to mean "material that extends out from the surface and does not form a thread." (ECF No. 93 at PageIDs 2539-40.) The Court further adopted the parties construction of "disposed on the inside surface" to mean "located at or on the inside surface of the hole." (
('677 Patent, ECF No. 23-1, Fig. 2A (color and label added).) As illustrated in Figure 2A, apertures A1 and A2 have protrusions 87 around the circumference of the aperture that extend towards the hole's center; the protrusions are separated by interstices 89.
Patent, ECF No. 23-1, Fig. 2B (color and label added).) Figure 3 further illustrates the plurality of protrusions 87 inside the surface of apertures A1 and A2. The patent specification also describes that the "[p]rotrusions 87 can be provided in any protruding form, such as pegs, bristles or tines . . . the size of individual protrusions 87, are not limited by the invention, so long as the matrix formed on the inside surface 81 renders contact region 85 tappable." ('677 Patent, ECF No. 23-1, col. 7, ll. 23-24, 38-41.)
('677 Patent, ECF No. 23-1, Fig. 3.) The protrusions' purpose, the patent specification asserts, become clear when the threaded portion 51 of the head section 40 of fastener 10 is driven into the aperture A, and thereby "caus[ing] [the] series of protrusions 87 to contact second thread 51 and maintain fastener 10 at the desired insertion angle IA." ('677 Patent, ECF No. 23-1, col. 9, ll. 35-40, 50-60.)
Defendant argues that because "Wolter '899 discloses a bone plate including `at least one, at least partially circumferential projection' that `in contrast to a helical circumferential thread—can also be arranged symmetrically on a circular line around the hole axis,'" "[a] person of ordinary skill in the art would have recognized that the `at least one' language used in Wolter '889 contemplates a plurality of protrusions being arranged circumferentially." (ECF No. 155-1 at PageID 5111 (quoting Wolter '889 at 2:43-3:40, 4:25-5:2).) The Court is unpersuaded by Defendant's argument.
The Court is persuaded by the PTAB's reasoning in IPR2014-00626. The projection embodiments Wolter '899 discloses are either "a burr or lip." (Wolter '889, ECF No. 156-2, col. 4, l. 40; Fig. 2.) Such projections do not constitute protrusions in the '677 Patent because they are unaltered ridges. ('677 Patent, ECF No. 23-1, col. 7, ll. 54-56; Wright IPR, ECF No. 199-1 at PageID 6637 (finding same).) Neither ridges nor grooves constitute protrusions under the '677 Patent, as the specification discloses that protrusions are formed by "cutting transversely through the ridges to discretize the ridges into protrusions." ('677 Patent, ECF No. 23-1, col. 7, ll. 54-56.) Moreover, intrinsic evidence does not support Defendant's construction of the "at least one" language as disclosing a plurality of protrusions. Nothing in Wolter '889 clearly and convincingly discloses anything more than projections that form a ridge. Accordingly, the Court finds that a genuine of issue of fact remains as to whether there is clear and convincing evidence that Wolter '889 discloses a plurality of protrusions. The Court, therefore, DENIES summary judgment on the issue of invalidity for anticipation by Wolter '889.
Defendant also contends that Wolter '117 anticipates the claims at issue. (ECF No. 209 at PageID 6947.) Defendant fails, however, to identify any language in Wolter '117 that discloses a plurality of protrusions. Rather, Defendant contends that if Plaintiffs' argument for infringement—that broken helical ridges are not threads—stands, then Wolter '117 is invalidating because intermitted helical threads will create protrusions as defined in the '677 Patent. (ECF No. 155-1 at PageID 5120.) The Court having rejected Plaintiffs' argument in its previous Order, finds no clear and convincing evidence that would establish that Wolter '117 discloses a plurality of protrusions. The Court, therefore, DENIES summary judgment on the issue of invalidity for anticipation by Wolter '117.
Defendant also argues that Wolter '889 renders the claims at issue obvious. (ECF No. 209 at PageID 6945.)
In sum, the Court DENIES summary judgment on the issue of invalidity in favor of Defendant.
Plaintiffs move for summary judgment of infringement for apparatus claims 11, 12, 33, 34, 47, 48, 65 and 66 against seven of Defendant's products.
"Evaluation of summary judgment of noninfringement is a two-part inquiry: first, a court construes the scope and meaning of the asserted patent claims, and then compares the construed claims to the accused product or process."
1. Direct/Literal Infringement
"To prove literal infringement, a plaintiff must show that the accused device contains each and every limitation of the asserted claims."
Each apparatus claim at issue requires a non-threaded aperture. (
Defendant argues the accused products are threaded, both structurally and functionally. (ECF No. 157-1 at PageID 5319.) Defendant specifically contends the accused products "include intermittent helical features on the inner surfaces of the bone plate apertures" and "these helical features have a fixed engagement configuration with a helical feature on the surface of the screw." (
Defendant supports its assertion that these helical features function as a thread through the declarations of Plaintiffs' expert witness Dr. Matthew Davies and Defendant's expert witness Dr. Sayed A. Nassar. Dr. Davies opined that when a screw was inserted coaxially with the accused products, it was constrained in an "engagement similar to a normal engagement of a screw with a threaded hole as would be understood by a person of ordinary skill in the art[.]" (Davies Dep., ECF No. 157-5 at PageIDs 5411:22-5412:10.) Nevertheless, Plaintiffs contend that the accused products do not function as threads because they permit insertion at various angles. (ECF No. 198 at PageID 6582.) This argument, as addressed above, is unavailing. Defendant's expert Dr. Nassar opined
(Nassar Report, ECF No. 157-3 ¶ 37.)
There appears to be no genuine issue as to whether a screw's threaded head mates with the intermitted helical features of the accused products when inserted coaxially. This mating constitutes a fixed engagement configuration between the helical features and the screw's surface, and thus the accused products are threaded. Accordingly, the Court finds no genuine issue of material fact remains as to whether the accused products contains each and every limitation of the asserted claims, because none of the accused products are non-threaded. The Court, therefore, GRANTS summary judgment of non-infringement of the apparatus claims in favor of Defendant.
2. Indirect/Induced Infringement
Defendant contends that because the accused products are threaded, there can be no finding of indirect/induced infringement of the '677 Patent method claims. The method claims at issue, however, do not require a non-threaded aperture as an element.
Claim 43 states:
('677 Patent, ECF No. 23-1, Claim 43.)
Claim 44 states:
('677 Patent, ECF No. 23-1, Claim 44.)
Claim 73 states:
('677 Patent, ECF No. 23-1, Claim 73.)
Claim 74 states:
('677 Patent, ECF No. 23-1, Claim 74.)
Whether the accused products' apertures are threaded, therefore, is not dispositive on induced infringement of the method claims in the instant case. Rather, whether the apertures have protrusions is the dispositive issue. Nothing in the patent in suit or in this Court's construction equates protrusions with a non-threaded aperture. "Protrusions" were construed to mean "material that extends out from a surface and does not form a thread." (ECF No. 93 at PageID 2539.) "Non-threaded" was construed to mean "without a continuous or intermittent helical feature on the inner surface of the hole which has a fixed engagement configuration with a helical feature on the surface of the screw." (
The Court is without adequate facts to determine whether Defendant's products are both threaded and contain protrusions. If such factual evidence existed, the trier of fact could reasonably find that circumstantial evidence, such as Defendant's various instruction manuals teaching customers to insert screws at various angles, supports a finding of direct infringement of the method claims for induced infringement purposes.
For the reasons stated above, the Court DENIES Plaintiff's Motion for Partial Summary Judgment on Infringement; DENIES Defendant's Motion for Summary Judgment of Invalidity; and GRANTS in part and DENIES in part Defendant's Motion for Summary Judgment of Non-Infringement. The Court specifically GRANTS Defendant's Motion for Summary Judgment of Non-Infringement as to the apparatus claims and DENIES the motion as to the method claims. The Court also DENIES Defendant's Motion to Dismiss.
(ECF No. 150-1 at PageID 4543.)
('677 Patent, ECF No. 23-1, Claim 39.)