Smith & Nephew, Arthrex End Surgical Device Patent Spats

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By Dana A. Elfin

Medical device makers Smith & Nephew and Arthrex, Inc. settled multiple patent infringement cases over surgical anchor products used to repair shoulder and other soft tissue damage ( Smith & Nephew Inc. v. Arthrex Inc. , D. Or., No. 08-cv-00714-MO, order of dismissal with prejudice 2/14/17 ); ( Arthrex, Inc. v. Smith & Nephew, Inc. , E.D. Tex., No. 2:16-cv-01041, order of dismissal with prejudice 2/13/17 .

Federal district courts in Oregon and Texas dismissed the parties’ dueling infringement cases at the companies’ request, after the companies entered into a confidential settlement and licensing agreement.

Large jury awards for both of the companies in the various cases motivated the competitors to settle, a lawyer familiar with the litigation told Bloomberg BNA Feb. 15.

Jury Awards Spurred Settlement

Smith & Nephew and Arthrex had been trying to settle the cases for a long time, the lawyer, who asked not be named, said. A December 2016 award for Arthrex made the settlement possible because both companies now had verdicts in their favor, the lawyer said.

Arthrex secured the latest award in December 2016 when a jury in the U.S. District Court for the Eastern District of Texas reached a $17.1 million jury verdict against Smith & Nephew over claims its suture anchors, including its Minitac TI and TwinFix Ti products, infringed two Arthrex patents.

Meanwhile, in 2015, a federal appeals court affirmed a district court judgment awarding Smith & Nephew $95 million in a patent infringement dispute against Arthrex.

Danielle Batsios, a corporate communications representative with Arthrex, confirmed in a Feb. 16 e-mail to Bloomberg BNA that Arthrex and Smith & Nephew had reached a settlement. Smith & Nephew didn’t respond to a request for comment.

Initial Suit Filed in 2004

One of the now-settled suits was filed more than 13 years ago. That suit, which Smith & Nephew filed in the U.S. District Court for the District of Oregon in January 2004, involved allegations that Arthrex’s bone anchors, including its SutureTak and PushLock products, infringed a patent licensed to Smith & Nephew.

Chief Judge Michael W. Mosman of the U.S. District Court for the District of Oregon entered an order Feb. 15 denying as moot the parties’s motion to dismiss the 2004 case.

Mosman said there wasn’t any need to dismiss the case because it had already been closed in 2013 when the court entered judgment in favor of Smith & Nephew. A federal appeals court issued a mandate affirming the decision in 2015, he said.

But Mosman on Feb. 14 entered an order dismissing a separate infringement suit Smith & Nephew brought against Arthrex in 2008 over newer Arthrex bone anchor models that weren’t part of Smith & Nephew’s earlier case.

Meanwhile, Magistrate Roy S. Payne of the U.S. District Court for the Eastern District of Texas dismissed Arthrex’s suit against Smith & Nephew and its subsidiary ArthroCare on Feb. 13.

Three Cases Dismissed

The settled cases include:

  •  ( Arthrex, Inc. v. Smith & Nephew, Inc. , E.D. Tex., No. 2:16-cv-01041, filed 10/11/16 );
  •  ( Smith & Nephew, Inc. v. Arthrex, Inc. , D. Or., No. 08-cv-00714-MO, filed 6/11/08 ); and
  •  ( Smith & Nephew, Inc. v. Arthrex, Inc. , D. Or., No. 04-cv-00029-MO, filed 1/12/04 ).
The patent cases were dismissed with prejudice, meaning the parties are barred from bringing the same claims back to court.

Smith & Nephew is based in London. Its subsidiary, ArthroCare, is based in Austin, Texas. Arthrex is based in Naples, Fla.

Fish & Richardson P.C. in Boston and Wilmington, Del., and Chernoff Vilhauer LLP in Portland, Ore., represented Smith & Nephew in both of the cases it filed in the U.S. District Court for the District of Oregon in 2004 and 2008.

Perkins Coie LLP in Chicago and Portland, Ore., represented Arthrex in the case Smith & Nephew filed in 2008.

Dickstein Shapiro LLP (now Blank Rome LLP) in Washington, Carlson Gaskey & Olds PC in Birmingham, Mich., and Schwabe Williamson & Wyatt in Portland, Ore., represented Arthrex in the case filed in 2004.

Perkins Coie LLP in Chicago represented Arthrex in its litigation against Smith & Nephew in the Eastern District of Texas, along with the Albritton Law Firm in Southlake, Texas, and Longview, Texas and Young & Associates in Farmington Hills, Mich.

Wolf Greenfield & Sacks PC in Boston and the Dacus Firm PC in Tyler, Texas, represented Smith & Nephew in the litigation in the Eastern District of Texas,

To contact the reporter on this story: Dana A. Elfin in Washington at delfin@bna.com

To contact the editor responsible for this story: Brian Broderick at bbroderick@bna.com

For More Information

The order dismissing the Smith & Nephew complaint filed against Arthrex in the U.S. District Court for the District of Oregon in 2008 is at http://src.bna.com/miw.The order dismissing the complaint Arthrex filed against Smith & Nephew in 2016 in the U.S. District Court for the Eastern District of Texas is at http://src.bna.com/miy.

The Smith and Nephew complaint filed against Arthrex in the U.S. District Court for the District of Oregon in 2004 is at http://src.bna.com/mik.The Smith & Nephew complaint filed against Arthrex in the U.S. District Court for the District of Oregon in 2008 is at http://src.bna.com/mil.The complaint Arthrex filed against Smith & Nephew in 2016 in the U.S. District Court for the Eastern District of Texas is at http://src.bna.com/mih.

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