throbber
case 3:14-cv-01688-R LM-CAN document 18 filed 08/28/14 page 1 of 12
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF INDIANA
`SOUTH BEND DIVISION
`
`CERAMEDIC LLC,
`
`Plaintiff/Counterclaim Defendant,
`
`V.
`
`ZIMMER HOLDINGS, INC. AND
`ZIMMER, iNC.,
`
`Defendants/Counterclaim Plaintiff.
`
`Civil Action No. 3:14-CV-1688
`
`JURY TRIAL DEMANDED
`
`ZIMMER DEFENDANTS' ORIGINAL ANSWER AND COUNTERCLAIM
`
`Zimmer Holdings, Inc. and Zimmer, Inc. (collectively "Zimmer") answer the original
`
`complaint of CeraMedic as follows:
`
`ADMISSIONS AND DENIALS
`
`The Parties
`
`i .
`
`CeraMedic is a Florida limited liability company having a place of business at
`
`2400 Dallas Parkway, Suite 200, Plano, Texas 75093, USA.
`
`Answer:
`
`Zimmer lacks sufficient knowledge or information to form a belief about the truth
`
`ofthe allegations ofthe paragraph.
`
`2.
`
`On information and belief, Zimmer Holdings, Inc. is a Delaware corporation
`
`having a place ofbusiness at 345 East Main Street, Warsaw, Indiana 46580.
`
`Answer:
`
`Admitted.
`
`3.
`
`On information and belief, Zimmer, Inc. is a Delaware corporation having a place
`
`ofbusiness at 1800 West Center Street, Warsaw, Indiana 4658 1-0708.
`
`-1-
`
`Exhibit 2319 Page 001
`
`CeraMedic Ex. 2319
`CeramTec GmbH v. CeraMedic LLC
`Case IPR2015-01328
`
`

`
`case 3:14-cv-01688-R LM-CAN document 18 filed 08/28/14 page 2 of 12
`
`Answer:
`
`Admitted.
`
`4.
`
`On information and belief, Zimmer, Inc. is a wholly owned subsidiary of Zimmer
`
`Holdings, Inc.
`
`Answer:
`
`Admitted.
`
`Patent-In-Suit
`
`5.
`
`U.S. Patent No. 6,066,584 ("the '584 patent"), entitled "Sintered AL203 Material,
`
`Process for Its Production and Use ofthe Material" was lawfully issued on May 23, 2000, with
`
`the original assignee Fraunhofer-Gesellschaft zur Förderung der Angewandten Forschung e.V.,
`
`Germany ("Fraunhofer"). CeraMedic is the owner, through assignment, of the title, interest, and
`
`rights to enforce and collect damages for all past, present, and future infringements of the '584
`
`patent by the accused products and the use thereof. A copy of the '584 patent is attached as
`
`Exhibit A.
`
`Answer:
`
`Zimmer admits that the '584 patent issued on May 23, 2000 to Fraunhofer and
`
`that CeraMedic is the owner of record with the patent office, but is without
`
`sufficient knowledge or information to form a belief about the truth of the
`
`allegations regarding ownership and ability to enforce and collect damages for the
`
`'584 patent.
`
`Background
`
`6.
`
`Fraunhofer is Europe's largest application-oriented research organization. Its
`
`research efforts are geared entirely to people's needs: health, security, communication, energy
`
`and the environment. As a result, the work undertaken by its researchers and developers has a
`
`40839956.1
`
`-2-
`
`Exhibit 2319 Page 002
`
`CeraMedic Ex. 2319
`CeramTec GmbH v. CeraMedic LLC
`Case IPR2015-01328
`
`

`
`case 3:14-cv-01688-R LM-CAN document 18 filed 08/28/14 page 3 of 12
`
`significant impact on people's lives. Fraunhofer was honored by Thomson Reuters as one of the
`
`Top loo Global Innovators in 2013
`
`Answer:
`
`Zimmer lacks sufficient knowledge or information to form a belief about the truth
`
`of the allegations of the paragraph.
`
`7.
`
`Fraunhofer is assignee of over 1,500 U.S. patents, and was the original assignee
`
`of the '584 patent. In early 2014, Fraunhofer assigned ownership of the '584 patent to
`
`CeraMedic.
`
`Answer:
`
`Zimmer admits Fraunhofer apparently assigned the '584 patent to CeraMedic in
`
`early 2014 per the recorded assignment of record with the patent office, but lacks
`
`sufficient knowledge or information to form a belief about the truth of the
`
`remaining allegations of the paragraph.
`
`8.
`
`The '584 patent relates to the field of ceramics and concerns sintered A1203
`
`compositions and methods for the use of such material as medical implants or tool material.
`
`Answer:
`
`Admitted.
`
`9.
`
`On information and belief, CeramTec GmbH ("CeramTec") developed and
`
`manufactures BIOLOX delta, an aluminum oxide matrix composite ceramic consisting of
`
`approximately 82% alumina (A1203), 17% zirconia (Zr02), and other trace elements.
`
`Answer:
`
`Admitted, but Zimmer clarifies that the percentages of alumina and zirconia stated
`
`are calculated by volume, not by weight, and that BIOLOX delta is a zirconia-
`
`toughened alumina (ZTA) product.
`
`40839956.1
`
`-3-
`
`Exhibit 2319 Page 003
`
`CeraMedic Ex. 2319
`CeramTec GmbH v. CeraMedic LLC
`Case IPR2015-01328
`
`

`
`case 3:14-cv-01688-RLM-CAN document 18 filed 08/28/14 page 4 of 12
`
`10.
`
`BIOLOX delta is incorporated into Zimmer products such as the BIOLOX
`
`OPTION Ceramic Femoral Head System.
`
`Answer:
`
`Admitted.
`
`11.
`
`The BIOLOX OPTION Ceramic Femoral Head System can be used in conjunction
`
`with compatible Zimmer acetabular and femoral stem components for total hip arthroplasty.
`
`Answer:
`
`Admitted.
`
`12.
`
`Zimmer is knowledgeable about the science behind BIOLOX delta material,
`
`including its composition, performance characteristics, and manufacture.
`
`Answer:
`
`Zimmer admits that it is knowledgeable about some composition and performance
`
`characteristics of BIOLOX delta, but denies that it is knowledgeable about all of
`
`the science behind the material, including the details of its manufacture.
`
`1 3 .
`
`On information and belief, Zimmer designs, develops, manufactures, offers for
`
`sale, sells, uses, distributes, and markets hip implants, many of which include the BIOLOX
`
`OPTION Ceramic Femoral Head System and/or other BIOLOX delta products.
`
`Answer:
`
`Admitted.
`
`Jurisdiction and Venue
`
`14.
`
`This Courthas subjectmatterjurisdictionpursuantto 28 U.S.C. §
`
`1331 and 1338
`
`because this action arises under the patent laws ofthe United States, including 35 U.S.C. § 271 et
`
`seq.
`
`Answer:
`
`Admitted.
`
`40839956.1
`
`-4-
`
`Exhibit 2319 Page 004
`
`CeraMedic Ex. 2319
`CeramTec GmbH v. CeraMedic LLC
`Case IPR2015-01328
`
`

`
`case 3:14-cv-01688-R LM-CAN document 18 filed 08/28/14 page 5 of 12
`
`15.
`
`This Court has personal jurisdiction over Zimmer because, among other things,
`
`Zimmer's headquarters are located in Warsaw, Indiana, and because, on information and belief,
`
`Zimmer engages in substantial and ongoing business in this District.
`
`Answer:
`
`Admitted.
`
`16.
`
`On information and belief, Zimmer offers to sell, sells, and distributes its
`
`BIOLOX OPTION Ceramic Femoral Head System, which infringes the ' 5 84 patent, to healthcare
`
`institutions and/or medical professionals within this District.
`
`Answer:
`
`Zimmer denies that
`
`its BIOLOX OPTION Ceramic Femoral Head System
`
`infringes the '584 patent, but otherwise admits the allegations ofthe paragraph.
`
`17.
`
`Venue is proper in thisjudicial district pursuant to 28 U.S.C. § 1391 and 1400.
`
`Answer:
`
`Admitted.
`
`Count I-Infringement of the 584 Patent
`
`i 8 .
`
`CeraMedic realleges and incorporates by reference each of the preceding
`
`paragraphs.
`
`Answer:
`
`Zimmer incorporates its prior answers.
`
`19.
`
`On information and belief, Zimmer, directly or through the actions of its
`
`employees, divisions, and/or subsidiaries, has infringed and continues to infringe the '584 patent
`
`directly, literally, and/or by equivalents.
`
`Answer:
`
`Denied.
`
`40839956.1
`
`-5-
`
`Exhibit 2319 Page 005
`
`CeraMedic Ex. 2319
`CeramTec GmbH v. CeraMedic LLC
`Case IPR2015-01328
`
`

`
`case 3:14-cv-01688-R LM-CAN document 18 filed 08/28/14 page 6 of 12
`
`20.
`
`On information and belief, CeramTec manufactures BIOLOX delta using a
`
`process patented by the '584 Patent.
`
`Answer:
`
`Denied
`
`21.
`
`On information and belief, Zimmer has infringed and continues to infringe the
`
`'584 patent directly, literally, and/or by equivalents by, among other things, making, using,
`
`offering for sale, selling, and distributing the BIOLOX OPTION Ceramic Femoral Head System,
`
`and/or other products including BIOLOX delta, individually and/or as part of hip replacement
`
`products.
`
`Answer:
`
`Denied
`
`22.
`
`On information and belief, at least as of the filing of this Complaint, because
`
`Zimmer knew of the '584 patent and knew of the science behind BIOLOX delta including its
`
`manufacture, Zimmer has ignored and/or disregarded that Zimmer' s actions constituted
`
`infringement of a valid patent and Zimmer continues to ignore and/or disregard an objectively
`
`high risk that Zimmer' s actions constitute infringement of a valid patent.
`
`Answer:
`
`Denied
`
`23.
`
`On information and belief, at least as of the filing of this Complaint, Zimmer's
`
`infringement ofthe '584 patent is and has been willful and deliberate.
`
`Answer:
`
`Denied
`
`40839956.1
`
`-6-
`
`Exhibit 2319 Page 006
`
`CeraMedic Ex. 2319
`CeramTec GmbH v. CeraMedic LLC
`Case IPR2015-01328
`
`

`
`case 3:14-cv-01688-R LM-CAN document 18 filed 08/28/14 page 7 of 12
`
`Damages and Relief
`
`24.
`
`As a consequence of Zimmer's infringement of the '584 patent, CeraMedic has
`
`been damaged in an amount not yet determined and will suffer additional irreparable damage
`
`unless Zimmer's infringing acts are enjoined by this Court.
`
`Answer:
`
`Denied
`
`AFFIRMATiVE DEFENSES
`
`Zimmer is not liable to CeraMedic for the following reasons:
`
`1.
`
`Zimmer does not directly or indirectly infringe the '584 patent, either literally or
`
`by equivalence.
`
`2.
`
`CeraMedic is estopped from asserting infringement against BIOLOX delta based
`
`on representations made in the patent and during prosecution of the application.
`
`3.
`
`The claims ofthe '584 patent are invalid under 35 U.S.C., including § 102, 103,
`
`and 112.
`
`4.
`
`5.
`
`CeraMedic's claims are barred by the theories of laches and equitable estoppel.
`
`CeraMedic is prevented under 35 U.S.C. §287 from collecting damages for acts
`
`occurring before actual notice of infringement.
`
`6.
`
`CeraMedic is prevented from recovering costs under 35 U.S.C. §287 for failing to
`
`disclaim invalid claims at the Patent and Trademark Office before commencing this suit.
`
`40839956.1
`
`-7-
`
`Exhibit 2319 Page 007
`
`CeraMedic Ex. 2319
`CeramTec GmbH v. CeraMedic LLC
`Case IPR2015-01328
`
`

`
`case 3:14-cv-01688-R LM-CAN document 18 filed 08/28/14 page 8 of 12
`
`COHNTERCLAIMS
`
`Counterclaim-Plaintiffs Zimmer, Inc. and Zimmer Holdings, Inc. (collectively "Zimmer")
`
`assert the following counterclaims for declaratory judgment of non-infringement and invalidity
`
`of U.S. Patent No. 6,066,584 against Counterclaim-Defendant CeraMedic LLC as follows:
`
`Jurisdiction and Venue
`
`1.
`
`CeraMedic has sued Zimmer for infringement of '584 patent in this action. The
`
`action creates an actual and justiciable controversy between CeraMedic and Zimmer concerning
`
`the non-infringement and invalidity of the '584 patent and Zimmer's continued right to make,
`
`use, sell, or offer for sale in the United States, or import into the United States, medical devices
`
`with BIOLOX delta.
`
`2.
`
`This Court has subject matter jurisdiction over Zimmer's declaratory judgment
`
`claims against Ceramedic pursuant to 28 U.S.C. § 1331, 1338(a), 2201, 2202 and the Patent Laws
`
`ofthe United States, 35 U.S.C. § 100, et. seq.
`
`3 .
`
`This Court has personal jurisdiction over CeraMedic based on its filing of the lawsuit
`
`for patent infringement against Zimmer in this jurisdiction.
`
`Background
`
`4.
`
`CeraMedic bases its claim of infringement on Zimmer products using BIOLOX delta
`
`ceramic materials from CeramTec. CeramTec is a leading innovator in the field of medical ceramics
`
`and a leading supplier of ceramic components for hip replacement and other medical applications.
`
`5.
`
`On information and belief, CeraMedic and its predecessor Fraunhofer have known
`
`that BIOLOX delta does not infringe the '584 patent. Fraunhofer and Andreas Krell, the lead named
`
`inventor of the '584 patent, had full knowledge of BIOLOX delta and certain other CeramTec
`
`products at least by 2004, but never asserted any claim of infringement against BIOLOX delta in
`
`communications with CeramTec about the '584 patent between 2005 and 2012.
`
`40839956.1
`
`-8-
`
`Exhibit 2319 Page 008
`
`CeraMedic Ex. 2319
`CeramTec GmbH v. CeraMedic LLC
`Case IPR2015-01328
`
`

`
`case 3:14-cv-01688-R LM-CAN document 18 filed 08/28/14 page 9 of 12
`
`6.
`
`On information and belief, a company known as Acacia affanged for the acquisition
`
`of the '584 patent from Fraunhofer by Acacia's subsidiary CeraMedic. Acacia is one of the
`
`largest patent aggregators, focused solely on collecting and monetizing patents through licensing
`
`and litigation instead of developing commercial products and inventions. CeraMedic was
`
`formed shortly before it acquired the acquisition of the'584 patent in February 2014 for the
`
`purpose of holding and suing on the patent.
`
`7.
`
`On information and belief, CeraMedic filed this lawsuit with actual or imputed
`
`knowledge that BIOLOX delta does not infringe any properly construed claim ofthe '584 patent.
`
`Count 1: Declaratory Judgment of Non-infringement of the '584 patent
`
`8.
`
`Zimmer does not infringe any of the method claims of the '584 patent because it
`
`does not manufacture BIOLOX delta or perform or control any of the steps used in
`
`manufacturing the accused BIOLOX delta.
`
`9.
`
`Zimmer does not infringe any claim of the '584 patent because BIOLOX delta is a
`
`zirconia toughened alumina (ZTA) and is not a sintered alumina material within the meaning of the
`
`'584 patent and the product was not made with certain steps and does not have certain properties
`
`required by the claims.
`
`lo.
`
`Zimmer does not make, use, sell, or offer for sale in the United States, or import
`
`into the United States, any processes or products, including medical devices with BIOLOX delta,
`
`that infringe, either literally or by equivalence, any claim of the '584 patent. Further, Zimmer
`
`has not contributed to, induced, or controlled acts of infringement of any claim of the ' 5 84 patent
`
`by another.
`
`40839956.1
`
`-9-
`
`Exhibit 2319 Page 009
`
`CeraMedic Ex. 2319
`CeramTec GmbH v. CeraMedic LLC
`Case IPR2015-01328
`
`

`
`case 3:14-cv-01688-RLM-CAN document 18 filed 08/28/14 page 10 of 12
`
`Count 2: Declaratory Judgment of Invalidity of the '584 Patent
`
`11.
`
`BIOLOX delta was disclosed in a CeramTec patent application published over a year
`
`before the priority date of the '584 patent. CeraMedic's interpretation of the scope of the '584 patent
`
`necessarily renders its patent invalid.
`
`12.
`
`CeramTec and others were publishing and commercializing sintered alumina
`
`materials before the date of invention and more than a year before the priority date of the '584
`
`patent that anticipate each limitation and/or render obvious the claimed invention of the '584
`
`patent, thereby invalidating the '584 patent under 35 U.S.C. § 102 and 103.
`
`13.
`
`The specification ofthe '584 patent fails to provide a written description or enable
`
`the claimed invention, thereby rendering the patent claims invalid under 35 U.S.C. § i 12.
`
`14.
`
`The claims ofthe '584 patent fail to particularly point out and distinctly claim the
`
`subject matter ofthe invention and therefore are invalid as indefinite under 35 U.S.C. § i 12.
`
`PRAYER FOR RELIEF
`
`For these reasons, Zimmer asks the Court to:
`
`a) Render judgment that CeraMedic take nothing;
`
`b) Dismiss CeraMedic's suit with prejudice;
`
`c) Declare that Zimmer does not infringe any claims ofthe '584 patent;
`
`d) Declare the '584 patent claims invalid;
`
`e) Award Zimmer its attorney fees;
`
`f) Assess costs against CeraMedic; and
`
`g) Award Zimmer all other reliefthe Court deems appropriate.
`
`40839956.1
`
`-10-
`
`Exhibit 2319 Page 0010
`
`CeraMedic Ex. 2319
`CeramTec GmbH v. CeraMedic LLC
`Case IPR2015-01328
`
`

`
`case 3:14-cv-01688-RLM-CAN document 18 filed 08/28/14 page 11 of 12
`
`Zimmer requests a trial by jury for all issues under Federal Rules of Civil Procedure 38.
`
`JURY DEMAND
`
`Dated: August 28, 2014
`
`Respectfully submitted,
`
`/5/ Erin Linder Hanig
`John D. LaDue (19039-71)
`Erin Linder Hanig (291 13-7 1)
`LADUE CURRAN KUEHN
`200 First Bank Building
`205 Jefferson Blvd.
`South Bend, IN 46601
`Telephone: (574) 968-0760
`Facsimile: (574) 968-0761
`j ladue@lck-law.com
`elinder@lck-law. com
`
`OF COUNSEL:
`
`Peter F. Felfe
`Charles B. Walker, Jr. (Admission pending)
`FULBRIGHT & JAWORSKII LLP
`i 3 0 1 McKinney, Suite 5100
`Houston, TX 77010-3095
`Telephone: (713) 651-5151
`Facsimile: (713) 651-5246
`charles.walker@nortonrosefulbright.com
`peter.felfe@nortonrosefulbright.com
`
`Counselfor Defendant
`ZIMMER HOLDINGS, INC. and
`ZIMMER, INC.
`
`40839956.1
`
`- 11 -
`
`Exhibit 2319 Page 0011
`
`CeraMedic Ex. 2319
`CeramTec GmbH v. CeraMedic LLC
`Case IPR2015-01328
`
`

`
`case 3:14-cv-01688-RLM-CAN document 18 filed 08/28/14 page 12 of 12
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on August 28, 2014, I electronically filed the forgoing document
`
`with the Clerk of the Court using the CMIECF system which sent notification of such filing by
`
`electronic mail to all attorneys of record:
`
`COUNSEL FOR PLAINTIFFS
`
`John M. Desmarais PHV
`Paul A. Bondor PHV
`Dustin F. Guzior PHV
`Alex R. Henriques PHV
`DESMARAIS LLP
`230 Park Avenue
`New York, NY 10169
`Telephone: (212) 351-3400
`Facsimile: (212) 351-3401
`idesmarais@desmaraisllp.com
`pbondor@desmaraisllp.com
`dguzior@desmaraisllp.com
`ahenriques@desmaraisllp.com
`
`Michael J. Hays
`James M. Lewis
`TUESLEY HALL KONOPA LLP
`212 E. LaSalle Ave., Suite 100
`South Bend, iN 46617
`Telephone: (574) 232-3538
`Facsimile: (574) 232-3790
`mhays@thklaw.com
`i lewis@thklaw .com
`
`/5/ Erin Linder Hanig
`Erin Linder Hanig
`
`40839956.1
`
`- 12 -
`
`Exhibit 2319 Page 0012
`
`CeraMedic Ex. 2319
`CeramTec GmbH v. CeraMedic LLC
`Case IPR2015-01328

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

Still Working On It

This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.

Give it another minute or two to complete, and then try the refresh button.

throbber

A few More Minutes ... Still Working

It can take up to 5 minutes for us to download a document if the court servers are running slowly.

Thank you for your continued patience.

This document could not be displayed.

We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.

Your account does not support viewing this document.

You need a Paid Account to view this document. Click here to change your account type.

Your account does not support viewing this document.

Set your membership status to view this document.

With a Docket Alarm membership, you'll get a whole lot more, including:

  • Up-to-date information for this case.
  • Email alerts whenever there is an update.
  • Full text search for other cases.
  • Get email alerts whenever a new case matches your search.

Become a Member

One Moment Please

The filing “” is large (MB) and is being downloaded.

Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.

Your document is on its way!

If you do not receive the document in five minutes, contact support at support@docketalarm.com.

Sealed Document

We are unable to display this document, it may be under a court ordered seal.

If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.


Access Government Site

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket