District Court Judge Finds No Inequitable Conduct for Inventor Omission in Orthopedic Fixation System Patent Dispute

May 11, 2016—United States District Court Judge Lee Yeakel of the Western District of Texas granted Plaintiff BioMedical Enterprises, Inc.’s motion for summary judgment that its patent was not unenforceable for inequitable conduct because Defendants (Solana Surgical, LLC and Wright Medical Technology, Inc.) failed to establish that Plaintiff omitted an inventor. Plaintiff had motioned for summary judgment on Defendants’ allegations that the patent in suit, U.S. Patent No. 8,584,853 titled “Method and Apparatus for an Orthopedic Fixation System,” directed toward sterile orthopedic implants and kits for bone fixation, is unenforceable because of alleged inequitable conduct during prosecution of the ‘853 Patent. Specifically, Defendant had alleged Plaintiff had engaged in inequitable conducted with the specific intent to deceive the USPTO by purposefully not disclosing an additional inventor and four prior-filed applications by that inventor.  Judge Yeakel determined that Defendants failed to provide proof necessary for summary judgement, and thus granted the motion in Plaintiff’s favor. The case remains pending and is captioned, Biomedical Enterprises, Inc. v. Solana Surgical, LLC, 1:14-cv-00095 (W.D. Tex.)

By: H. Rachael Million-Perez

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