United States District Court, W.D. Tennessee, Western Division
ANGLEFIX, LLC, and THE UNIVERSITY OF NORTH CAROLINA Plaintiffs,
WRIGHT MEDICAL TECHNOLOGY, INC., Defendant.
ORDER CONCERNING MOTIONS FOR SUMMARY JUDGMENT OF
INFRINGEMENT/NON-INFRINGEMENT AND INVALDITY AND MOTION TO
McCALLA, UNITED STATES DISTRICT COURT JUDGE
case concerns alleged infringement of United States Patent
No. 6, 955, 677 (the “'677 Patent”). Before
the Court is Plaintiffs Anglefix, LLC and the University of
North Carolina (collectively, “Plaintiffs”)'s
Motion for Partial Summary Judgment of Infringement on
Apparatus claims 11, 12, 33, 34, 47, 48, 65 and 66 of the
'677 Patent. Defendant Wright Medical Technology, Inc.
opposed. (ECF No. 165.) Also before the Court is
Defendant's Motions for Summary Judgment of Invalidity
(ECF No. 155) and of Non-Infringement of the ‘677
Patent (ECF No. 157). Plaintiffs filed responses in
opposition. (ECF Nos. 197-98.) Defendant replied. (ECF Nos.
reasons stated below, the Court DENIES Plaintiff's Motion
for Partial Summary Judgment on Infringement; DENIES
Defendant's Motion for Summary Judgment of Invalidity;
and GRANTS in part and DENIES in part Defendant's Motion
for Summary Judgment of Non-Infringement. The Court also
DENIES Defendant's Motion to Dismiss.
case involves the alleged infringement of the following
patent on a “multi-angular plate and screw system,
” developed by Dr. Laurence E. Dahners (Compl., ECF No.
1 ¶ 5):
U.S. PATENT NUMBER
6, 955, 677 (“the '677 Patent”)
October 18, 2005
Multi-angular Fastening Apparatus and
Method for Surgical Bone Screw/Plate Systems
(Id. ¶¶ 5, 8.) Plaintiff Anglefix asserts
that it is the exclusive licensee of the '677 Patent.
(Id. ¶ 5.) Plaintiff The University of North
Carolina at Chapel Hill (“UNC”) asserts that it
is the owner by assignment of the '677 Patent. (ECF No.
216 ¶ 5.) Plaintiffs allege that Defendant manufactures
and distributes medical products that infringe one or more of
the claims of the '677 Patent (ECF No. 1 ¶¶ 9,
12, 16). Plaintiffs also allege that Defendant contributorily
infringes (id. ¶ 13) and induces others to
infringe at least one claim of the '677 Patent
(id. ¶ 14). The accused products are:
• CLAW II - Polyaxial Compression Plating System 3DSi
• ORTHOLOC Forefoot Fracture System
• ORTHOLOC Calcaneal Fracture System
• ORTHOLOC 3Di Foot Reconstruction System - Midfoot
• ORTHOLOC 3Di Ankle Fracture System
• ORTHOLOC 3Di Ankle Fusion Plate System
• ORTHOLOC 3Di Foot Reconstruction System
Complaint for this action was filed by Plaintiff Anglefix,
LLC on June 11, 2013. (ECF No. 1.) On September 20, 2013,
Defendant filed an Answer to the Complaint and Counterclaims.
(ECF No. 7.) On April 14, 2014, Defendant filed a petition
with the United States Patent and Trademark Office
(“PTO”) for inter partes review
(“IPR”) before the Patent Trial and Appeal Board
(“PTAB”) seeking review of the '677 Patent.
(ECF No. 21-1 at 2.) Defendant's petition was filed one
week after the PTO granted IPR for the '677 Patent in the
parallel case, AngleFix Tech, LLC. v. Smith & Nephew,
Inc., No. 2:13-cv-02281-JPM-tmp (W.D. Tenn.). On May 1,
2014, the Court granted the Motion to Stay in the parallel
case based on the PTO's decision to grant the petition
for IPR. (AngleFix Tech, LLC. v. Smith & Nephew,
Inc., No. 2:13-cv-02281-JPM-tmp (W.D. Tenn.), ECF No.
26, 2014, Defendant filed a Motion to Stay Pending IPR.
(AngleFix Tech, LLC v. Wright Med. Tech., Inc., No.
2:13-cv-02407-JPM-tmp (W.D. Tenn.), ECF No. 21.) On July 14,
2014, Plaintiff AngleFix LLC filed its Response to
Defendant's Motion to Stay. (ECF No. 22.) Defendant filed
a Reply on July 22, 2014. (ECF No. 29.)
15, 2014, both parties filed opening claim construction
briefs. (ECF Nos. 23, 24.) On August 15, 2014, both parties
filed responsive claim construction briefs. (ECF Nos. 32,
33.) The parties filed a Joint Claim Construction and
Prehearing Statement on August 29, 2014. (ECF No. 34.) On
October 7, 2014, the Claim Construction Hearing was reset to
November 14, 2014. (ECF No. 39.) On the same day, Plaintiff
Anglefix, LLC filed notice with the Court that the PTO had
granted Defendant's IPR with regard to twenty-seven of
the thirty-nine '677 Patent's claims. (ECF No. 40 at
1.) On October 8, 2014, the Court ordered the parties to file
a Joint Status Report in light of the PTO's decision to
grant IPR. (ECF No. 41.) The parties filed the Joint Status
Report on October 15, 2014. (ECF No. 42.) The Court granted
the Motion to Stay Pending IPR on October, 22, 2014. (ECF No.
March 29, 2015, Plaintiff Anglefix, LLC filed a Motion to
allow Plaintiff to voluntarily withdraw the twenty-seven
claims under IPR and to lift the stay pending IPR on the
remaining twelve claims (“Motion to Lift the Stay
Pending IPR”). (ECF No. 45.) Defendant filed its
Response in Opposition on April 9, 2015. (ECF No. 46.) On May
6, 2015, the Court filed an Order for Clarification as to
whether the withdrawal of the twenty-seven claims would be
with prejudice. (ECF No. 47.) On May 21, 2015, Plaintiff
Anglefix, LLC filed Notice with the Court that the withdrawal
of the claims would be with prejudice. (ECF No. 48.) The
Court denied the Motion to Lift the Stay Pending IPR on June
12, 2015. (ECF No. 49.) On July 6, 2015, Defendant filed the
Judgment and Final Written Decision in the IPR by PTAB. (ECF
No. 50.) The decision was based on the patent owner's
disclaiming of all the claims under review by PTAB. (See
17, 2015, Plaintiff Anglefix, LLC filed an Answer to
Defendant's counterclaims, denying Defendant's
allegations of non-infringement and invalidity. (ECF No. 53.)
September 28, 2015, the Court held a Claim Construction
Hearing. (ECF No. 67.) On October 5, 2015, Defendant filed a
Supplemental Claim Construction Brief on the use of the word
“permanent” in Defendant's construction of
the terms “tap, ” “tapped, ” or
“tapping.” (ECF No. 70.) On October 12, 2015,
Plaintiff filed a responsive post-hearing brief. (ECF No.
71.) On December 30, 2015, the Court entered its Order
Following Claim Construction Hearing. (ECF No. 93.) The Court
construed the following five terms:
“without a continuous or intermittent helical
feature on the inner surface of the hole which has
a fixed engagement configuration with a helical
feature on the surface of the screw”
Tappable contact region
“untapped region of material structured to
engage the threaded head of a fastener to tap the
region at a desired, non-predetermined angle”
Tap, tapped, tapping
“create a custom internal thread in a
material in response to forceful insertion and
rotation of a head section”
Variable insertion angle
Plain and ordinary meaning: “the angle
between the screw and the bone plate can
Plain and ordinary meaning: “forming or
engaging a thread”
(Id. at PageIDs 2559-60.)
April 25, 2016, Defendant filed a motion for summary judgment
for lack of standing. (ECF No. 130.) Plaintiff Anglefix
responded in opposition on May 11, 2016. (ECF No. 146.)
Defendant filed a reply brief on May 31, 2016. (ECF No. 153.)
The Court held a motion hearing on June 21, 2016. (Min.
Entry, ECF No. 164.)
Anglefix filed a motion for summary judgment of infringement
on May 23, 2016. (ECF No. 150.) Defendant filed a Motion to
Strike the Expert Reports of Matthew Davies and Preclude Him
from Offering Expert Testimony in this Case on May 31, 2016.
(ECF No. 154.) Plaintiff filed a response in opposition on
June 26, 2016. (ECF No. 170.)
27, 2016, the Court denied Defendant's motion for summary
judgment for lack of constitutional standing, but granted
summary judgment for lack of prudential standing. (ECF No.
169.) The Court afforded Plaintiff Anglefix thirty days to
join the rightful patent owner, the University of Northern
Carolina (“UNC”). (Id. at PageID 6227.)
The Court stayed the action until UNC was joined as a
25, 2016, AngleFix filed a motion, not to join UNC as a
co-plaintiff, but to use a Waiver of Claims (hereinafter
“the Waiver” or “UNC's Waiver”)
from UNC as a substitute for joinder. (ECF No. 171.)
Defendant responded in opposition on July 27, 2016. (ECF No.
172.) On August 2, 2016, the Court denied AngleFix's
motion to accept UNC's Waiver in place of the joinder of
UNC as a party in the instant litigation. (ECF No. 175.)
September 15, 2016, AngleFix filed a motion to join UNC as a
co-plaintiff. (ECF No. 176.) Defendant opposed the motion on
October 5, 2016. (ECF No. 180.) Anglefix filed a reply on
October 14, 2016 (ECF No. 183), and Defendant filed a
sur-reply with leave of Court on October 18, 2016 (ECF No.
186). On November 3, 2016, the Court held a telephonic motion
hearing. (Min. Entry, ECF No. 189.)
November 15, 2016, the Court entered an Order Granting
Plaintiff's Motion to Intervene, Denying Defendant's
Motion for Summary Judgment for Lack of Standing, and Lifting
Stay. (ECF No. 191.)
November 23, 2016, Defendant sought leave to file a reply in
support of its Motion to Strike the Expert Reports of Matthew
Davies and Preclude Him from Offering Expert Testimony in
this Case (ECF No. 154). (ECF No. 195.) The Court granted
leave on December 2, 2016. (ECF No. 201.) On December 5,
2016, Plaintiff, along with newly joined co-plaintiff UNC,
moved for leave to file a sur-reply to Defendant's reply
concerning Expert Matthew Davies. (ECF No. 203.) Defendant
filed a response in opposition to this request, stating that
Plaintiffs failed to comport with multiple local rules, e.g.,
failure to consult prior to filing, and that Plaintiffs'
motion failed to cite any authority. (ECF No. 205.)
December 15, 2016, Defendant filed its Reply Memorandum in
Support of its Motion for Summary Judgment of
Non-Infringement of U.S. Patent No. 6, 995, 677 (ECF No.
157). (ECF No. 208.) The same day, Defendant filed its Reply
to its Motion For Summary Judgment of Invalidity (ECF No.
155). (ECF No. 209.)
Court held a Telephonic Status Conference on December 21,
2016. (Min. Entry, ECF No. 210.) The same day, the Court
entered an Order Setting Schedule for Amended Complaint and
Pending Motions Hearing. (ECF No. 212.) On January 18, 2017,
Plaintiffs Anglefix and UNC filed an Amended Complaint, which
brought the same claims as the original Complaint (ECF No.
1), but included UNC as a party. (ECF No. 216.) The Court
held a motions hearing on January 31, 2017. (Min. Entry, ECF
February 1, 2017, Defendant filed a Motion to Dismiss for
failure to state a claim. (ECF No. 221.) Plaintiffs filed a
response in opposition on February 15, 2017. (ECF No.
is entitled to summary judgment “if the movant shows
that there is no genuine dispute as to any material fact and
the movant is entitled to judgment as a matter of law.”
Fed.R.Civ.P. 56(a). “A fact is ‘material' for
purposes of summary judgment if proof of that fact would
establish or refute an essential element of the cause of
action or defense.” Bruederle v. Louisville Metro
Gov't, 687 F.3d 771, 776 (6th Cir. 2012).
considering a motion for summary judgment, [the] court
construes all reasonable inferences in favor of the nonmoving
party.” Robertson v. Lucas, 753 F.3d 606, 614
(6th Cir. 2014) (citing Matsushita Elec. Indus. Co. v.
Zenith Radio Corp., 475 U.S. 574, 587 (1986)).
“The moving party bears the initial burden of
demonstrating the absence of any genuine issue of material
fact.” Moshol ...