DePuy Mitek loses bid to blame patent infringement on surgeons

September 11, 2009 by MassDevice staff

A federal judge slapped down the Raynham, Mass.-based orthopedic device maker's claim that it couldn't be responsible for the infringement because it's the surgeons who use the device.

A federal judge had harsh words for DePuy Mitek in his ruling that the Raynham, Mass.-based orthopedic device maker infringed a patent held by Arthrex Inc.

The Naples, Fla.-based firm sued DePuy Mitek over a pair of patents covering its TransFix anterior cruciate ligament repair system, alleging that DePuy's Slingshot system infringed the patents and asking for a summary judgment to that effect.

DePuy claimed, among other things, that it couldn't be held liable for any infringement because "even if [Arthrex] has shown the SlingShot method directly infringes" the patent, "there can be no basis for a judgment of infringement ... because 'it is surgeons, not [DePuy], who conduct ACL reconstruction surgery,'" wrote Judge James Rosenbaum of the U.S. District Court for Minnesota.

"Clinging to this slender reed, [DePuy] has the temerity to deny infringing [Arthrex's] patent. This position cannot be sustained," Rosenbaum wrote.

The lawsuit stems from the 1999 release of the SlingShot system by Innovasive Devices Inc., which DePuy Mitek acquired a year later. Arthrex sued Innovasive for infringement and the two agreed to a settlement that saw Innovasive agree to discontinue the SlingShot or "any similar system," according to court documents.

After the acquisition, DePuy Mitek re-introduced a modified SlingShot, Arthrex protested infringement — again — and the two agreed to another settlement for Mitek to "cease and desist all promotion, advertising in print or in electronic media, marketing, and sale of the SlingShot System" by July 15, 2003, except under a license agreement that expired July 14.

Immediately after that deal expired, Mitek brought out the SlingShot again, prompting the current infringement suit by Arthrex.

Rosenbaum wrote that Mitek's repeated violations of its agreements with Arthrex showed its intent to infringe.

"Each time, [DePuy Mitek] has plunged right back into the conduct it agreed to avoid," he wrote.

But the ruling hinged on Mitek's motion that Rosenbaum rule on whether "implant" covers screw-in implants like the SlingShot and impact implants like the Transfix. Rosenbaum declined to define the term, writing that it "simply has no bearing on any question" in the case.