DCT
1:15-cv-01257
Acantha LLC v. DePuy Orthopaedics Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Acantha LLC (Delaware)
- Defendant: DePuy Synthes Sales, Inc. (Massachusetts), et al. (collectively, "Defendants")
- Plaintiff’s Counsel: Conway, Olejniczak & Jerry, S.C.; Caldwell Cassady & Curry
- Case Identification: 1:15-cv-01257, E.D. Wis., 10/21/2015
- Venue Allegations: Venue is alleged to be proper based on Defendants being subject to personal jurisdiction, conducting regular business, and committing alleged acts of infringement within the Eastern District of Wisconsin.
- Core Dispute: Plaintiff alleges that Defendants’ cervical spine fixation systems, which incorporate a screw locking mechanism, infringe a patent related to orthopedic implant assemblies with anti-backout features.
- Technical Context: The technology concerns medical devices used in orthopedic surgery, specifically spinal fusion, to prevent bone screws from loosening or backing out of a fixation plate over time.
- Key Procedural History: The patent-in-suit, RE43,008, is a reissue of U.S. Patent No. 6,261,291. The complaint alleges an extensive history of pre-suit contact, including letters sent in 2002 by an inventor to various DePuy and Synthes entities providing notice of the original patent, followed by meetings in 2006 and further licensing discussions in 2014-2015. The complaint also alleges Defendants monitored the patent’s reissue application. A Certificate of Correction was issued in March 2015, changing the listed assignee on the patent-in-suit from "Acantha, Inc." to the plaintiff, "Acantha LLC."
Case Timeline
| Date | Event |
|---|---|
| 1999-07-08 | Priority Date (Filing of original U.S. Patent No. 6,261,291) |
| 2001-07-17 | Original U.S. Patent No. 6,261,291 issues |
| 2002-03-01 | (approx.) Inventor allegedly sends notice of '291 patent to Defendants |
| 2006-06-01 | (approx.) Inventors allegedly meet with Defendants to discuss technology |
| 2006-09-01 | (approx.) Alleged licensing discussions between parties |
| 2011-12-06 | U.S. Reissue Patent No. RE43,008 issues |
| 2012-01-01 | (approx.) Johnson & Johnson completes acquisition of Synthes Inc. |
| 2014-01-01 | (approx.) Further licensing discussions allegedly begin |
| 2015-10-21 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Reissue Patent No. RE43,008 - "Orthopedic Implant Assembly"
- Issued: December 6, 2011
The Invention Explained
- Problem Addressed: The patent’s background section identifies a key disadvantage of prior art orthopedic implants used to join bone segments: the "tendency of the implants to loosen or detach from the bone over time" (RE43008 Patent, col. 1:26-28).
- The Patented Solution: The invention provides an implant assembly, typically a plate and screw, with an integrated mechanism to prevent the screw from backing out. The core of the solution is a "stopping member" within the bore of the plate ('008 Patent, col. 2:31-37). In one embodiment, this member is a flexible, C-shaped "annular collar" that sits in a groove; the screw head forces the collar to expand as it passes through and the collar then snaps back to a smaller diameter behind the screw head, blocking its retreat ('008 Patent, col. 4:20-44). In another embodiment, the screw head itself is compressible, allowing it to be squeezed through a rigid stopping member before expanding back to its original, larger size ('008 Patent, col. 6:15-39).
- Technical Importance: This design aims to provide durable and secure attachment to bone without requiring a separate anchor to be implanted, thereby reducing "loss of bone and intraoperative time required to implant the anchor" ('008 Patent, col. 3:9-12).
Key Claims at a Glance
- The complaint does not identify specific asserted claims. Independent claim 1 is representative of the primary embodiment.
- Independent Claim 1 requires:
- A stabilizing element (e.g., a plate) having a bore with an anterior and posterior opening.
- A "biased stopping member" that defines a "reversibly expandable passageway" with a smaller and larger diameter configuration.
- A securing element (e.g., a screw) with a head having a maximum diameter greater than the smaller diameter configuration of the passageway, so the head is retained behind the stopping member.
- The complaint does not explicitly reserve the right to assert dependent claims, but this is standard practice.
III. The Accused Instrumentality
Product Identification
The "Accused Instrumentalities" are identified as the Zero-P VA, Vectra, Vectra-T, and Vectra-One systems of instruments and implants (Compl. ¶33).
Functionality and Market Context
The complaint describes these products as "plate and screw fixation systems for the anterior cervical spine" (Compl. ¶31). The key technical feature alleged is a "one-step blocking mechanism" that works with "variable angle screws" (Compl. ¶30). The complaint does not provide further technical detail on how this mechanism operates. The products are used for "stand-alone anterior stabilization of the cervical spine" (Compl. ¶30).
IV. Analysis of Infringement Allegations
The complaint does not provide a claim chart or element-by-element breakdown of its infringement allegations. It makes a general assertion that the accused products "meet claims of the patent-in-suit" (Compl. ¶37). The analysis below is based on a potential infringement theory for representative Claim 1, mapping the claim elements to the product features as described in the complaint.
RE43,008 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a) a stabilizing element having an anterior surface, a posterior surface, and at least one bore... | The plate component of the Zero-P VA and Vectra family systems, which is designed for fixation to the cervical spine. | ¶31 | col. 4:15-19 |
| b) a biased stopping member defining at least in part a reversibly expandable passageway... | The "one-step blocking mechanism" featured in the accused systems. | ¶30 | col. 4:20-24 |
| c) a securing element having an elongated body, and a head... the head having a maximum diameter greater than the smaller diameter configuration of the passageway... so that the head is retained... | The "variable angle screws" used with the accused systems, which are allegedly retained by the "one-step blocking mechanism." | ¶30 | col. 4:45-56 |
Identified Points of Contention
- Scope Questions: A central question will be whether the accused "one-step blocking mechanism" falls within the scope of the claimed "biased stopping member." The complaint’s lack of technical detail raises the question of whether the accused mechanism operates by creating a "reversibly expandable passageway" as required by the claim, or if it uses a different locking principle.
- Technical Questions: Discovery will be required to determine the precise structure and method of operation of the accused locking mechanism. The key factual dispute will likely be whether that mechanism functions by elastic deformation of a collar-like structure, as shown in the patent's primary embodiment, or through an alternative means not covered by the claims.
No probative visual evidence provided in complaint.
V. Key Claim Terms for Construction
"biased stopping member"
- Context and Importance: This term is the central element of the invention. Its construction will likely determine the outcome of the infringement analysis, as the dispute will focus on whether the defendants' "one-step blocking mechanism" is a "biased stopping member." Practitioners may focus on this term because its scope dictates whether the patent covers only the specific expanding collar shown or a broader class of anti-backout mechanisms.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: Claim 1 uses the general term "biased stopping member" without limiting it to a specific structure. The specification notes that "a variety of suitable members may be used" ('008 Patent, col. 4:21-22).
- Evidence for a Narrower Interpretation: The primary embodiment described in detail and depicted in the figures is an "annular collar" seated in a groove ('008 Patent, col. 4:20-35; Figs. 1-3A). A defendant could argue that the claims should be construed as limited to this disclosed structure or its equivalents.
"reversibly expandable passageway"
- Context and Importance: This term defines the function of the "biased stopping member". The infringement analysis will turn on whether the accused mechanism creates a passageway that "expands" to allow the screw head through and then "reversibly" returns to a smaller, retaining state.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The term itself does not specify a mechanism, suggesting it could cover any passageway that temporarily enlarges and then elastically returns to its original state.
- Evidence for a Narrower Interpretation: The specification consistently links this function to the physical expansion of the annular collar, which is "displaced" by the screw head and then "returns to the unexpanded configuration" due to its bias ('008 Patent, col. 5:1-15). This may suggest the expansion and reversibility are tied to the specific elastic deformation of the disclosed collar.
VI. Other Allegations
Indirect Infringement
The complaint alleges inducement of infringement, stating that Defendants instruct and encourage surgeons and hospitals to use the accused products in an infringing manner through "promotional materials, their website, and surgical technique guides" (Compl. ¶41). It also alleges contributory infringement by selling components, such as the instruments in the accused systems, that are known to be "especially made or especially adapted for use in an infringement" and are not staple articles of commerce (Compl. ¶¶ 45-46).
Willful Infringement
The complaint makes detailed allegations to support willfulness. It claims Defendants had pre-suit knowledge of the original patent as early as March 2002 from letters sent by the inventor, and that this knowledge was reinforced through subsequent meetings and licensing discussions in 2006 and 2014-2015 (Compl. ¶¶ 18-27). It alleges Defendants acted "despite an objectively high likelihood that their actions constituted infringement" (Compl. ¶49).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of claim construction: how broadly will the court define the term "biased stopping member"? Will the term be construed broadly to cover a range of locking mechanisms, or will it be limited more closely to the specific expanding "annular collar" embodiment that is heavily featured in the patent’s specification?
- A key evidentiary question will be one of technical operation: does the accused "one-step blocking mechanism" function by creating a "reversibly expandable passageway" as required by the claims? The case will likely depend on a detailed technical comparison between the elastic expansion-and-contraction principle of the patented invention and the actual locking mechanism employed in the accused spinal fixation systems.
- Given the specific and extensive allegations of pre-suit notice dating back more than a decade before the complaint was filed, a critical question for damages will be willfulness. If infringement is found, the court will examine whether Defendants' conduct after being repeatedly notified of the patent constituted an "unjustifiably high risk of infringement" that was either known or so obvious that it should have been known.