Smith & Nephew Incorporated v. Arthrex, Incorporated

603 F. App'x 981
CourtCourt of Appeals for the Federal Circuit
DecidedMarch 18, 2015
Docket2014-1691, 2014-1694
StatusUnpublished
Cited by3 cases

This text of 603 F. App'x 981 (Smith & Nephew Incorporated v. Arthrex, Incorporated) is published on Counsel Stack Legal Research, covering Court of Appeals for the Federal Circuit primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Smith & Nephew Incorporated v. Arthrex, Incorporated, 603 F. App'x 981 (Fed. Cir. 2015).

Opinions

TARANTO, Circuit Judge.

Smith & Nephew, Inc. (S & N) sued Arthrex, Inc. for infringement of U.S. Patent No. 5,601,557 in January 2004. In 2009, we affirmed a summary judgment rejecting the invalidity challenge but required a new infringement trial because of an error in the initial claim construction. In 2013, reversing a JMOL that had been entered in Arthrex’s favor, we reinstated a jury verdict finding that Arthrex had infringed the '557 patent. On remand to the district court, Arthrex sought to relitigate the '557 patent’s validity on the ground that our 2013 decision materially broadened the construction of a claim tern. The district court denied the request. It also denied Arthrex’s substantial-evidence-based challenge to the jury’s finding of lost-profits damages, and it awarded S & N supplemental damages for post-verdict infringement. Arthrex appeals. We affirm.

[983]*983BaCkground

This litigation has included three trials and two previous appeals. See Smith & Nephew, Inc. v. Arthrex, Inc., 355 Fed.Appx. 384 (Fed.Cir.2009) (S & N I); Smith & Nephew, Inc. v. Arthrex, Inc., 502 Fed.Appx. 945 (Fed.Cir.2013) (S & N II). The same patent was also at issue in an earlier appeal in separate litigation. See Smith & Nephew, Inc. v. Ethicon, Inc., 276 F.3d 1304 (Fed.Cir.2001).

The '557 patent claims a method used by surgeons to anchor a suture in bone, thereby helping to attach (or reattach) tissue to the bone. The surgeon drills a hole through the hard, outer shell of a patient’s bone and presses an anchor into the drilled hole. S & N II, 502 Fed.Appx. at 946. Beyond the hard outer shell of bone lies softer, cancellous bone, and the anchor of the claimed method has resilient legs that compress as they are inserted through the hole in the hard bone but expand once they reach the softer bone. Id. The expanded legs catch against the hard outer bone, lodging the anchor in place. Id. Claim 1 of the '557 patent reads as follows:

1. A method for anchoring in bone a member and attached suture, comprising the steps of:
forming a hole in the bone;
attaching a suture to a member;
lodging the member within the hole by pressing the member with attached suture into the hole; and
attaching tissue to the suture so that the tissue is secured against the bone.

’557 patent, col. 11, lines 2-10. This case involves S & N’s allegation that Arthrex indirectly infringed by selling certain Su-tureTak and PushLock anchors having attached sutures (“suture anchors”) that surgeons use to perform the claimed methods.

An initial trial in 2007 resulted in a hung jury. The district court then held a second trial in 2008, limited to the issues that the parties had raised in the first trial. After the jury found for S & N, Arthrex appealed. In 2009, we reversed the district court’s construction of a claim term “resile” — which appears in claim 2 but had been held, in an unappealed ruling, implicit in claim l’s “member” language. S & N I, 355 Fed.Appx. at 385-87 & n. 1. We held that the anchor’s “intrinsic resiliency” alone “must be sufficient to lodge the anchor” in the bone. Id. at 386. We vacated the jury verdict and remanded for a new trial on infringement. Id. at 387-89. We also affirmed the summary judgment rejecting Arthrex’s validity challenge. Id.

In 2011, after remand, a new trial (the third) produced a verdict of infringement as well as an award of damages consisting of lost profits-on sales lost to Arthrex’s Bio-SutureTak anchors ($67,793,868) plus a reasonable royalty for the patented invention’s use where S & N did not lose sales ($16,987,556). The district court, however, granted Arthrex JMOL of non-infringement after concluding that it had given the jury an incorrect construction of “lodging” and that no reasonable jury could find infringement under the correct construction. On S & N’s appeal, we reversed the district court’s JMOL construction of “lodging.” S & N II, 502 Fed. Appx. at 948-49. Agreeing with S & N, we held that the construction given to the jury was correct and that the jury could reasonably find infringement under that construction. We reversed the JMOL, reinstated the verdict, and “remand[ed] to the [district] court for further proceedings not inconsistent with [our] opinion.” Id. at 950.

On remand, Arthrex filed two motions seeking to relitigate the issue of validity. Arthrex rested its motions on the contention that the construction of “lodging” we adopted in 2013, S & N II, 502 Fed.Appx. [984]*984at 949, was materially broader than the construction under which the invalidity challenge was originally rejected, a ruling we affirmed in 2009, S & N I, 355 Fed. Appx. at 387-89. The district court rejected Arthrex’s requests, concluding that this court’s 2013 decision did not “meaningfully broaden[ ] claim construction.” J.A. 35556.

Arthrex also renewed its post-trial motion challenging the lost-profits award, a motion it had originally filed after the second jury verdict. The district court denied the motion, stating that our mandate in S & N II prohibited it from reconsidering the lost-profits issue and that, in any event, “substantial evidence supported] the verdict.” J.A. 35553-55. In September 2013, the court entered a judgment for the above-stated lost-profits and royalty amounts plus $3,533,450 in prejudgment interest.

Finally, S & N moved for supplemental damages to compensate for Arthrex’s infringing sales made between the 2011 trial and March 2013. The district court granted S & N the requested supplemental damages. The court’s December 2013 order added to the amounts already awarded $6,775,893 in supplemental damages plus $174,618 in pre-judgment interest.

Arthrex appeals. We have jurisdiction under 28 U.S.C. § 1295(a)(1).

Discussion

A. Invalidity

In S & N I, we affirmed the district court’s grant of summary judgment rejecting Arthrex’s challenges to the validity of the '557 patent. 355 Fed.Appx. at 387-89. Our mandate issued on January 15, 2010. In S & N II, we finally decided all issues of infringement, 502 Fed.Appx. at 947-50, and our mandate issued on April 12, 2013. S & N II involved S & N’s appeal from a judgment of non-infringement based on a claim construction of “lodging.” In defending that judgment, Arthrex invoked what this court had said about “lodging” in S & N 7’s invalidity discussion; but it did not argue that judicial estoppel, see New Hampshire v. Maine, 532 U.S. 742, 749, 121 S.Ct. 1808, 149 L.Ed.2d 968 (2001), or the general principle that the same construction must be used for validity and infringement determinations, see Amazon.com, Inc. v. Barnesandnoble.com, Inc., 239 F.3d 1343

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603 F. App'x 981, Counsel Stack Legal Research, https://law.counselstack.com/opinion/smith-nephew-incorporated-v-arthrex-incorporated-cafc-2015.