Nobelpharma Ab v. Implant Innovations, Inc.

141 F.3d 1059 (1998)

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Nature of the Case

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Facts

Drs. Branemark and Bo-Thuresson af Ekenstam are the named inventors on the '891 patent. They claimed 'an element intended for implantation into bone tissue.' This 'element' is placed directly into the jawbone where it acts as a tooth root substitute. The implants have a network of particularly-sized and particularly-spaced 'micropits.' These micropits, which have diameters in the range of about 10 to 1000 nanometers or, preferably, 10 to 300 nanometers, allow a secure connection to form between the implant and growing bone tissue through a process called 'osseointegration.' Branemark is also one of the authors of a book published in 1977, entitled 'Osseointegrated Implants in the Treatment of the Edentulous Jaw Experienced from a 10-Year Period.' The book includes a page containing four scanning electron micrographs (SEMs) of titanium implants that exhibit micropits. The caption describing these SEMs reads, in part: 'Irregularities are produced during manufacturing in order to increase the retention of the implants within the mineralized tissue.' The Book does not specifically refer to 'micropits.' The Book does not specifically refer to 'micropits.' Barnieske deleted all reference to the Book from the patent application that was ultimately filed in Sweden. The Book is not mentioned in the U.S. patent application. Branemark entered into an exclusive license agreement with P. The '891 patent issued in 1982. In July 1991, P brought this suit alleging that D's dental implants infringed the '891 patent. D claimed invalidity, unenforceability, and non-infringement and also brought an antitrust counterclaim, based in part on the assertion that P attempted to enforce a patent that it knew was invalid and unenforceable. D alleged that P was aware that the inventors' intentional failure to disclose the Book to the PTO would render the '891 patent unenforceable. Branemark's deposition testimony admitted that one 'could consider' the procedure used to manufacture the micropitted surface a trade secret, and 'it might be' that there are details 'important to making' the micropitted surface that are not disclosed in the patent. The district court granted D's motion for JMOL of invalidity and non-infringement. The patent was invalid under §112, P 1, for failure to disclose the best mode. On the antitrust issue, the jury awarded D approximately $3.3 million in compensatory damages, an amount the court trebled pursuant to section 4 of the Clayton Act, 15 U.S.C. § 15 (1994). The court denied P's motion for JMOL on D's antitrust counterclaim. P appealed.