DCT
1:17-cv-11172
Medidea LLC v. DePuy Orthopaedics Inc
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Medidea, LLC. (Michigan)
- Defendant: DePuy Orthopaedics, Inc. (Indiana)
- Plaintiff’s Counsel: VANEK, VICKERS & MASINI, P.C.
- Case Identification: 1:16-cv-10638, N.D. Ill., 11/16/2016
- Venue Allegations: Venue is asserted based on Defendant's business operations, customer base, and alleged infringing acts of making, using, and selling products within the Northern District of Illinois.
- Core Dispute: Plaintiff alleges that Defendant’s Attune® Knee System infringes patents related to multiple-cam, posterior-stabilized knee prostheses.
- Technical Context: The technology concerns the design of the cam-and-post mechanism in total knee replacements, which provides stability and mimics natural knee motion after the posterior cruciate ligament has been removed.
- Key Procedural History: The complaint alleges that the inventor offered to license the technology to Defendant in 2003, an offer which was declined. It further notes that a patent subsequently obtained by Defendant's affiliate, the Wyss Patent, cites Plaintiff's '426 patent as prior art. While not mentioned in the complaint, a post-filing Inter Partes Review (IPR) proceeding on the '426 patent, initiated in 2017, resulted in a confirmation of the patentability of the asserted claims.
Case Timeline
| Date | Event |
|---|---|
| 2000-11-28 | Priority Date for '426 and '280 Patents |
| 2003-02-01 | Inventor allegedly offered license to Defendant (approx.) |
| 2003-03-24 | Defendant allegedly declined license offer |
| 2003-05-06 | '426 Patent Issue Date |
| 2013-03-20 | Defendant announced public launch of Attune Knee System |
| 2016-11-15 | '280 Patent Issue Date |
| 2016-11-16 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,558,426 - "Multiple-Cam, Posterior-Stabilized Knee Prosthesis," issued May 6, 2003
The Invention Explained
- Problem Addressed: The patent describes a problem in prior art posterior-stabilized knee prostheses where a gap can exist between the femoral cam and tibial post when the knee is in extension. This can allow for undesirable anterior-posterior sliding ("translation") before the components engage, potentially leading to premature wear and sub-optimal mechanics (’426 Patent, col. 2:1-8).
- The Patented Solution: The invention proposes a femoral component with multiple, distinct points of cam action. This design aims to provide immediate stability at the start of flexion to prevent translation, while also using different contact points through the range of motion to facilitate a more natural rollback and prevent dislocation during deep flexion (’426 Patent, col. 2:21-45). The use of interconnected cams to create separate contact points is also disclosed (’426 Patent, Fig. 2D).
- Technical Importance: This approach sought to improve patient outcomes by creating a more stable implant that better replicated the kinematics of a natural knee throughout its entire range of motion, from full extension to deep flexion (’426 Patent, col. 2:15-18).
Key Claims at a Glance
- The complaint asserts independent claim 9 (Compl. ¶24).
- The essential elements of claim 9 are:
- A distal femoral knee-replacement component configured for use with a tibial component having a bearing surface and a superior tibial post with a posterior aspect.
- The component comprises a body with medial and lateral condylar protrusions and an intercondylar region to receive the tibial post.
- The component also comprises a structure that provides "more than one physically separate and discontinuous points of cam action as the knee moves from extension to flexion."
- The complaint does not explicitly reserve the right to assert dependent claims of the ’426 Patent.
U.S. Patent No. 9,492,280 - "Multiple-Cam, Posterior-Stabilized Knee Prosthesis," issued November 15, 2016
The Invention Explained
- Problem Addressed: As a continuation of the application leading to the ’426 Patent, the ’280 Patent addresses the same issues of instability and unnatural motion in prior art knee prostheses (Compl. ¶7; ’280 Patent, col. 1:21-30).
- The Patented Solution: The ’280 Patent claims a total knee replacement system with specific, interacting geometries on both the femoral cam and the tibial post. The claims define a combination of concave and convex surfaces in both the sagittal (front-to-back) and transverse (horizontal) planes, designed to control articulation and rotation throughout flexion (’280 Patent, Abstract; col. 6:1-12).
- Technical Importance: This invention claims a specific geometric solution to achieve the goal of a stable, naturally-moving knee replacement, defining the shapes of the articulating surfaces in multiple dimensions to guide the implant's motion (’280 Patent, Abstract).
Key Claims at a Glance
- The complaint asserts independent claim 1 and dependent claim 2 (Compl. ¶37).
- The essential elements of independent claim 1 are:
- A total knee replacement system comprising a tibial component (with a post) and a femoral component (with a cam mechanism).
- A majority of the tibial post's posterior surface is concave in the sagittal plane.
- The femoral cam mechanism has a superior convex portion, a concave central portion, and an inferior convex posterior portion.
- The inferior convex portion contacts the tibial post at or before 90 degrees of flexion.
- At least a portion of the tibial post's posterior surface is convex in the transverse plane.
- At least a portion of the femoral cam mechanism is concave in the transverse plane.
- Dependent claim 2 adds the requirement that a portion of the femoral cam mechanism forms an "'s' shaped surface portion in the sagittal plane" (’280 Patent, col. 6:13-15).
III. The Accused Instrumentality
Product Identification
- The accused instrumentality is Defendant’s Attune® Knee System (Compl. ¶10).
Functionality and Market Context
- The Attune Knee System is a total knee replacement prosthesis. The complaint highlights Defendant's marketing of its "SOFCAM™ Contact" technology, which is described as having an "S-curve design that provides a smooth engagement for stability through flexion" (Compl. ¶17). The complaint further alleges that Defendant promotes the system as benefitting from "the patented s-shape of the cam and spine" (Compl. ¶18).
- The complaint asserts the commercial importance of the system by citing a press article reporting over 31,000 implantations in the first year after its launch (Compl. ¶20).
IV. Analysis of Infringement Allegations
’426 Patent Infringement Allegations
| Claim Element (from Independent Claim 9) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A distal femoral knee-replacement component... comprising: a body having a pair of medial and lateral condylar protrusions and an intercondylar region... | The Attune Knee System's distal femoral component is alleged to have the required body with condylar protrusions and an intercondylar region to receive the tibial post. | ¶28 | col. 5:10-12 |
| a structure providing more than one physically separate and discontinuous points of cam action as the knee moves from extension to flexion. | The complaint alleges the accused cam surface has a concave surface and a convex surface, which provide at least two "separate and discontinuous points of cam action." This is illustrated in an annotated product brochure image. | ¶29 | col. 5:13-15 |
- Visual Evidence: An annotated excerpt from Defendant’s product brochure is provided to illustrate the allegedly infringing "discontinuous points of cam action" on the femoral component (Compl. ¶29, Fig. 7).
’280 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a tibial component having a tibial post with a posterior surface | The Accused Product is alleged to be a total knee-replacement system that includes a tibial component with a tibial post and posterior surface. | ¶39 | col. 5:10-11 |
| a femoral component... including an intercondylar femoral cam mechanism configured to articulate with the posterior surface of the tibial post | The Accused Product's femoral component allegedly includes an intercondylar femoral cam mechanism for articulation with the tibial post. | ¶40 | col. 5:12-17 |
| wherein a majority of the posterior surface of the tibial post is concave in a sagittal plane... | The complaint alleges, with a supporting annotated product image, that a majority of the posterior surface of the Accused Product's tibial post is concave when viewed in the sagittal plane. | ¶41 | col. 5:18-20 |
| wherein the cam mechanism of the femoral component has a superior convex portion, a concave central portion, and an inferior convex posterior portion | The Accused Product's cam mechanism is alleged to have the claimed three-part geometry, forming an "s-shape". An annotated product image highlights these alleged portions. | ¶42 | col. 6:1-3 |
| wherein the inferior convex posterior portion contacts the posterior surface of the tibial post at or before 90 degrees of flexion | The complaint alleges this functionality is present in the Accused Product by citing to the disclosure of the Defendant's own Wyss Patent, which allegedly describes contact beginning at "about 80 degrees" of flexion. | ¶¶43-44 | col. 6:4-6 |
| wherein at least a portion of the posterior surface of the tibial post is convex in a transverse (horizontal) plane | The complaint alleges, with supporting images, that the posterior surface of the Accused Product's tibial post is convex in the horizontal plane. | ¶45 | col. 6:7-9 |
| wherein at least a portion of the cam mechanism of the femoral component is concave in the transverse (horizontal) plane. | The complaint alleges, with supporting images, that the cam surface of the Accused Product's femoral component is concave in the horizontal plane. | ¶46 | col. 6:10-12 |
- Visual Evidence: The complaint includes several annotated images from Defendant's product brochures to illustrate the alleged geometries, including one showing the concave sagittal profile of the tibial post (Compl. ¶41, Fig. 12), another detailing the three-part convex-concave-convex femoral cam (Compl. ¶42, Fig. 13), and another highlighting the "patented s-shape of the cam and spine" (Compl. ¶47, Fig. 20).
- Identified Points of Contention:
- Scope Questions: For the ’426 Patent, a central question is whether a continuous "S-curve" cam surface, as allegedly found on the Attune system, can meet the claim limitation of "more than one physically separate and discontinuous points of cam action." The interpretation of "discontinuous" will be critical.
- Technical Questions: For the ’280 Patent, the infringement case relies heavily on mapping Defendant's marketing materials and a separate patent (the Wyss patent) onto the Accused Product. A key question for the court will be whether the Attune Knee System, as sold, actually embodies the specific disclosures of the Wyss patent regarding flexion timing (Compl. ¶¶43-44) and whether its geometry precisely meets the multiple concave/convex limitations of claim 1.
V. Key Claim Terms for Construction
The Term: "physically separate and discontinuous points of cam action" (’426 Patent, claim 9)
- Context and Importance: This term is the core of the infringement allegation for the ’426 Patent. Its construction will determine whether a single, continuous surface with changing curvatures can infringe. Practitioners may focus on this term because Defendant is likely to argue its continuous "S-curve" cam is neither "physically separate" nor "discontinuous."
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification suggests the structure can be "interconnected" while still providing "physically separate contact points" (’426 Patent, Fig. 2D title; col. 4:12-15). This could support an interpretation where the points of contact are distinct in function and location, even if the underlying structure is a single piece.
- Evidence for a Narrower Interpretation: The specification's frequent reference to distinct "bars" or "members" that "bridge... the intercondylar space" could support a narrower reading requiring physically distinct structural elements, not just different regions on a single continuous surface (’426 Patent, col. 4:46-56).
The Term: "'s' shaped surface portion" (’280 Patent, dependent claim 2)
- Context and Importance: This term is critical because the complaint alleges Defendant's own marketing describes a "patented s-shape of the cam and spine" (Compl. ¶18, ¶47). Plaintiff will likely argue this is a direct admission of infringement of this claim element.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The term "'s' shaped" is not explicitly defined, so its plain and ordinary meaning would likely be broad enough to read on the geometry shown in Defendant's marketing materials.
- Evidence for a Narrower Interpretation: Claim 2 depends on claim 1, which requires the cam to have a "superior convex portion, a concave central portion, and an inferior convex posterior portion." Defendant could argue that "'s' shaped" must be limited to this specific three-part geometry and that its marketing use of the term was non-technical and does not meet the specific structural requirements of the claim.
VI. Other Allegations
- Indirect Infringement: The complaint primarily alleges direct infringement by Defendant as the manufacturer and seller of the Attune Knee System (Compl. ¶¶25, 36). The complaint does not set forth specific factual allegations to support separate counts of induced or contributory infringement.
- Willful Infringement: The complaint makes detailed allegations to support willfulness. It asserts that Defendant had pre-suit knowledge of the '426 patent and the underlying invention as early as March 2003, when it was allegedly offered a license and declined (Compl. ¶¶13-14, 32). The complaint characterizes Defendant's subsequent alleged infringement as "egregious conduct" justifying treble damages (Compl. ¶33).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of claim construction: Can the term "discontinuous points of cam action" in the ’426 patent be interpreted to cover a single, continuous S-shaped surface, or does it require a structural interruption? The outcome of this question may be dispositive for infringement of the first patent.
- A key evidentiary question will be one of infringement by admission: To what extent can Plaintiff leverage Defendant's own marketing of a "patented s-shape" and the technical disclosures of its own Wyss patent as evidence that the Attune Knee System meets the specific geometric limitations of the ’280 patent?
- A final central question will concern willfulness: Do the allegations of a declined 2003 license offer, followed by Defendant’s development of an allegedly similar product, constitute the kind of egregious conduct necessary to support a finding of willful infringement and potential enhanced damages?