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Puget Bioventures, LLC v. Biomet Orthopedics LLC

United States District Court, N.D. Indiana, South Bend Division

July 2, 2018




         Hudson 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 (“Puget”).

         The 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.


         The ‘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.


         A 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).


         Biomet 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.

         A. Cancelled Claims

         The 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.

         B. Patent Eligibility of Claims 45 and 47

         Biomet 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.

         The Patent Act defines the term “process” as “process, art or method, and includes a new use of a known process, machine, manufacture, composition ...

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