Conformis (NSDQ:CFMS) and Zimmer Biomet (NYSE:ZBH) have agreed to settle all patent disputes over Conformis’ knee and hip replacement products and Zimmer’s knee, shoulder and hip replacement devices, according to an SEC filing today.
The two companies have also agreed to cross-license their respective technologies, and Zimmer Biomet will pay Conformis $9.6 million by January 15, 2021, for the licenses, releases and other immunities that Conformis granted to Zimmer. No payment is due from Conformis to Zimmer.
In August 2019, Billerica, Mass.-based Conformis sued Zimmer Biomet (Warsaw, Ind.) in U.S. District Court in Delaware, alleging infringement of four different patents for personalized joint replacement surgery. Conformis claimed that Zimmer Biomet had infringed its patents for personalized knee and hip replacement surgery and for shoulder arthroplasty.
Conformis was targeting Zimmer Biomet’s Vanguard, Persona, NexGen and Gender Solutions knee systems; its PSI shoulder for trabecular metal reverse glenoid and Signature personalized total and reverse shoulder systems; and its Signature acetabular guide system for hip replacement surgery.
On May 22, 2020, the companies agreed to dismiss all outstanding litigation and agreed not to commence litigation in the future, according to Conformis.
Conformis also granted Zimmer royalty-free, non-exclusive, worldwide license to certain patents for patient-specific or partially patient-specific instrumentation for knee, shoulder or hip replacement. Zimmer granted Conformis a fully paid-up, royalty-free, non-exclusive, worldwide license to certain patents for implants and patient-specific instruments for knee replacement.
“The company is pleased to have finalized this matter,” Zimmer Biomet spokesperson Monica Kendrick said in an email to MassDevice.
“We are glad to have reached a mutually productive settlement of all current patent litigation with Zimmer Biomet and are pleased to have the company become a licensee,” said Conformis president & CEO Mark Augusti in a news release. “Through this settlement, we have once again monetized our patient-specific instrument patents and steadfastly protected our core business of patient-specific implants.”