United States District Court, N.D. Indiana, South Bend Division
OPINION AND ORDER
Surgical Design, Inc. initiated this lawsuit against Biomet
Orthopedics LLC and Biomet Manufacturing, LLC (collectively,
“Biomet”) in the Northern District of Illinois on
July 19, 2010, alleging infringement of its patent for
“Methods and Apparatus for Femoral and Tibial
Resection, ” U.S. Patent No. 7, 344, 541 (the
“‘541 patent”). Hudson Surgical filed its
first amended complaint two months later, in September (the
“FAC”). [DE 17] Biomet answered the FAC that same
month. [DE 19] On motion, the case was then transferred to
this Court in November 2010 and then ordered stayed in
December 2010, pending reexamination of the ‘541 patent
before the United States Patent and Trademark Office. During
the stay, Hudson Surgical assigned ownership of the
‘541 patent to Puget Bioventures, LLC
stay was lifted in August 2017 following the reexamination,
and the parties were ordered to exchange contentions and
proceed with claims construction. On November 3, 2017, Biomet
filed its Motion for Judgment on the Pleadings. [DE 114] For
the reasons stated herein, the Court will grant Biomet's
motion in part and deny in part.
‘541 patent issued to Hudson Surgical on March 18,
2008. Only four months later, Hudson Surgical sent a letter
to Biomet, informing Biomet of the ‘541 patent. The
letter advised Biomet that Hudson Surgical believed the
‘541 patent covered several of Biomet's products.
Subsequent alerts issued in 2010, when Puget sent Biomet
charts demonstrating how Biomet's products were
purportedly infringing on the ‘541 patent. Despite
these warnings, Biomet took no steps to avoid infringement of
the ‘541 patent. Specifically, Biomet designed, made,
marketed, provided, distributed, and sold potentially
infringing products to hospitals and surgeons, and in so
doing, allegedly committed direct infringement of the
‘541 patent (specifically, patent claims 21-33 and
41-48). These products include Biomet's MIS TKA
instruments and techniques. Furthermore, Biomet induced and
contributed to infringement of the ‘541 patent by
providing its infringing products to hospitals and surgeons,
and by training surgeons to use said products (specifically,
patent claims 1, 2, 5-13, 21-33, 41-48). Finally, Puget
alleges that all of Biomet's purported direct and
indirect infringement has been willful.
motion for judgment on the pleadings under Rule 12(c) is
subject to the same standard of review as a motion to dismiss
under Rule 12(b)(6). Gill v. City of Milwaukee, 850
F.3d 335, 339 (7th Cir. 2017). Therefore, the Court construes
the complaint in the light most favorable to the plaintiff,
accepts the factual allegations as true, and draws all
reasonable inferences in the plaintiff's favor.
Reynolds v. CB Sports Bar, Inc., 623 F.3d 1143, 1146
(7th Cir. 2010). A complaint must contain only a “short
and plain statement of the claim showing that the pleader is
entitled to relief.” Fed.R.Civ.P. 8(a)(2). That
statement must contain sufficient factual matter, accepted as
true, to state a claim for relief that is plausible on its
face, Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009),
and raise a right to relief above the speculative level.
Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570
(2007). However, a plaintiff's claim need only be
plausible, not probable. Indep. Trust Corp. v. Stewart
Info. Servs. Corp., 665 F.3d 930, 935 (7th Cir. 2012).
Evaluating whether a plaintiff's claim is sufficiently
plausible to survive a motion to dismiss is “‘a
context-specific task that requires the reviewing court to
draw on its judicial experience and common sense.'”
McCauley v. City of Chicago, 671 F.3d 611, 616 (7th
Cir. 2011) (quoting Iqbal, 556 U.S. at 678).
argues for dismissal on three grounds. First, and most
briefly, Biomet submits that many of the patent claims
alleged in the FAC should be dismissed as unenforceable
because they were cancelled during reexamination. Biomet also
argues that claims 45 and 47 of the ‘541 patent are
patent ineligible, and therefore Puget cannot allege that
Biomet infringed on those claims. Finally, Biomet maintains
that the allegations of infringement are insufficiently pled.
following claims of the ‘541 patent were cancelled
during the reexamination: 1-30, 32, 34, 41-44, 46, 48, 53,
and 54. [DE 118-5] Because of this, Biomet argues that
Puget's infringement allegations regarding claims 1, 2,
5-13, 21-30, 32, 41-44, 46, and 48 should all be dismissed
because those claims are unenforceable. The Court agrees. The
Federal Circuit has made clear that “when a claim is
cancelled, the patentee loses any cause of action based on
that claim, and any pending litigation in which the claims
are asserted becomes moot.” Fresenius USA, Inc. v.
Baxter Int'l, Inc., 721 F.3d 1330, 1340 (Fed. Cir.
2013). So, Puget's infringement allegations based on any
of the cancelled claims are moot and must be dismissed for
lack of jurisdiction. See SHFL Entm't, Inc. v.
DigiDeal Corp., ___ Fed. App'x ___, 2018 WL 2049238,
at *3 (Fed. Cir. May 2, 2018) (“Suits based on
cancelled claims must be dismissed for lack of jurisdiction,
however.”) (citing Target Training Int'l, Ltd.
v. Extended Disc N. Am., Inc., 645 Fed. App'x 1018,
1023 (Fed. Cir. 2016) (upholding the district court's
dismissal for lack of jurisdiction because Fresenius
rendered the suit moot as to the claims cancelled after
reexamination)); see also CFTC v. Bd. of Trade of City of
Chicago, 701 F.2d 653, 656 (7th Cir. 1983) (“[A]
dismissal for mootness is a dismissal for lack of
jurisdiction ….”). Puget does not oppose the
dismissal of its allegations related to the ‘541
patent's cancelled claims in response to the instant
motion. The Court will therefore dismiss these moot
allegations for lack of jurisdiction, without prejudice.
Patent Eligibility of Claims 45 and 47
contends that claims 45 and 47 of the ‘541 patent are
patent ineligible under 35 U.S.C. § 101. Congress has
defined which inventions are patentable in § 101 of the
Patent Act, which states in its entirety:
Whoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new
and useful improvement thereof, may obtain a patent therefor,
subject to the conditions and requirements of this title.
Patent Act defines the term “process” as
“process, art or method, and includes a new use of a
known process, machine, manufacture, composition ...