Smith & Nephew (FTSE:SN, NYSE:SNN) claimed a win today in its long-running patent infringement battle with rival Arthrex, after a federal judge in Oregon ordered Arthrex to stop selling some of its suture anchors in the U.S. as of Oct. 2.
Judge Michael Mosman of the U.S. District Court for Oregon also ordered Arthrex to either remove all advertising material for the infringing devices from its website as of yesterday or "post a disclaimer on its website stating that any use of the infringing suture anchors … must not occur in the United States until the expiration of the ‘557 patent pursuant to an injunction entered against Arthrex," according to court documents.
The sales ban extends to Arthrex’s 3.5mm Bio-PushLock and 3.5mm PEEK PushLock suture anchors, "except those which are excluded as being of the ‘large eyelet’ variety," Mosman wrote, as well as "any suture anchors not more than colorably different from said infringing suture anchors." The judge also ordered Arthrex to recall by Oct. 16 "all infringing suture anchors … that Arthrex has distributed in any way and for which Arthrex has not yet sent an invoice, unless such anchors have already been used in surgery. Arthrex may use the recalled anchors in any way that does not violate this injunction," according to the documents.
Arthrex can continue to sell its Bio-Composite SutureTak, Pushlock suture anchors in sizes other than 3.5mm and the large eyelet devices, "which include an eyelet member having a diameter of at least 2.4mm," according to the documents.
“Smith & Nephew is dedicated to providing innovative healthcare products and services to our surgeon customers and their patients, and we will vigorously defend our intellectual property when warranted," Smith & Nephew advanced surgical devices president Mike Frazzette said in prepared remarks.
It’s the latest turn in a nearly decade-long legal battle between Smith & Nephew and Arthrex over surgical anchor patents. The British orthopedic medical device company first sued Arthrex in 2004 for patent infringement over anchors used in shoulder repair surgery. SNN won $20.5 million in a June 2008 ruling that Arthrex willfully infringed the patents. After the appeals court overturned that decision in November 2009, the case went back to trial with a new interpretation of the terms of the patent.
A jury granted SNN an $85 million win in June 2011, finding that Arthrex was guilty of patent infringement with its SutureTak, PushLock and Bio-PushLock shoulder repair anchors. But in December 2011, an Oregon judge ruled that Arthrex didn’t infringe on SNN’s surgical anchor patents, finding that "no reasonable jury could possibly find that Arthrex infringed in this case," including via indirect infringement. The Federal Circuit court overturned that decision Jan. 16, sending the case back to the U.S. District Court for Oregon for Mosman to reconsider. Arthrex has asked the U.S. Supreme Court to hear an appeal of that decision.
Smith & Nephew is not Arthrex’s only legal opponent. KFx Medical won a pair of decisions in July in a patent infringement lawsuit against Arthrex over technology used to attach soft tissue to bone (a month later, Smith & Nephew inked a licensing deal with KFx for some of the products under dispute with Arthrex).