NEWS RELEASE
January 14, 2008
(Westfield, NJ)
Contact:
Ray Janeczek
Direct Dial: 908.518.6369 or
rjaneczek@ldlkm.com
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 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
