IN THE UNITED STATES DISTRICT COURT

FOR THE NORTHERN DISTRICT OF INDIANA

SOUTH BEND DIVISION

CERAMEDIC LLC,

Plaintiff,

v.

CERAMTEC GMBH,

Defendant.

Civil Action No. 3:14-cv-1969

JURY TRIAL DEMANDED

COMPLAINT

CeraMedic LLC (“CeraMedic”) hereby asserts claims of patent infringement against 

CeramTec GmbH (“CeramTec”), and alleges as follows:

THE PARTIES

1. CeraMedic is a Florida limited liability company having a place of business at 

2400 Dallas Parkway, Suite 200, Plano, TX 75093.

2. On information and belief, CeramTec GmbH is a German Gesellschaft mit 

beschränkter Haftung (limited liability company) having a principal place of business at 

CeramTec-Platz 1-9, 73027 Plochingen, Germany.

PATENT-IN-SUIT

3. U.S. Patent No. 6,066,584 (“the ’584 patent”), entitled “Sintered Al2O3 Material,

Process for Its Production and Use of the Material” was lawfully issued on May 23, 2000, with 

the original assignee Fraunhofer-Gesellschaft zur Förderung der Angewandten Forschung e.V., 

Germany (“Fraunhofer”). CeraMedic is the owner, through assignment, of the title, interest, and 

rights to enforce and collect damages for all past, present, and future infringements of the ’584

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patent by the accused products and the use thereof. A copy of the ’584 patent is attached as 

Exhibit A.

BACKGROUND

4. Fraunhofer is Europe’s largest application-oriented research organization. Its

research efforts are geared entirely to people’s needs: health, security, communication, energy 

and the environment. As a result, the work undertaken by its researchers and developers has a 

significant impact on people’s lives. Fraunhofer was honored by Thomson Reuters as one of the 

Top 100 Global Innovators in 2013.

5. Fraunhofer is the assignee of over 1,500 U.S. patents and was the original 

assignee of the ’584 patent. In early 2014, Fraunhofer assigned ownership of the ’584 patent to 

CeraMedic.

6. The ’584 patent relates to the field of ceramics and concerns sintered Al2O3

compositions and methods for the use of such material as medical implants or tool material.

7. On information and belief, CeramTec developed and manufactures BIOLOX® 

Delta, an aluminum oxide matrix composite ceramic comprising approximately 82% alumina 

(Al2O3), 17% zirconia (ZrO2), and other trace elements.

8. On information and belief, CeramTec is knowledgeable about the science behind 

BIOLOX® Delta material, including its composition, performance characteristics, and 

manufacture.

9. CeramTec knew of the ’584 patent at least as of December 8, 2005, when 

CeramTec GmbH requested of Fraunhofer a worldwide, non-exclusive patent license 

to EP 0756586 B1 (“EP 586”) and its U.S. counterpart, the ’584 patent, among other patents. 

On February 15, 2011, Fraunhofer further sought to reach a licensing agreement with CeramTec

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GmbH as to EP 586 family patents, including the ’584 patent, specifically identifying 

BIOLOX® Delta products as infringing products.

JURISDICTION AND VENUE

10. This Court has subject matter jurisdiction pursuant to 28 U.S.C. §§ 1331 and 1338 

because this action arises under the patent laws of the United States, including 35 U.S.C. § 271 et 

seq.

11. This Court has personal jurisdiction over CeramTec at least because CeramTec 

offers to sell and sells BIOLOX® Delta ceramics to customers within this district, which 

BIOLOX® Delta ceramics infringe the ’584 patent. CeramTec’s offers to sell and sales of 

BIOLOX® Delta ceramics to customers within this District are part of CeramTec’s substantial 

and ongoing business within this district.

12. In particular, CeramTec sells BIOLOX® Delta, including BIOLOX® Delta

femoral heads, in this district to Biomet, Inc., (“Biomet”), an Indiana corporation having a 

primary place of business at 56 East Bell Drive, Warsaw, Indiana, 46581-0587.

13. CeramTec also sells BIOLOX® Delta, including BIOLOX® Delta femoral heads, 

in this district to DePuy Orthopaedics, Inc. (“DePuy”), an Indiana corporation having a principal 

place of business at 700 Orthopaedic Drive, Warsaw, Indiana 46582.

14. CeramTec also sells BIOLOX® Delta, including BIOLOX® Delta femoral heads, 

in this district to Zimmer Holdings, Inc. and/or its wholly owned subsidiary Zimmer, Inc. 

(collectively, “Zimmer”). Zimmer Holdings, Inc. is a Delaware corporation having a principal 

place of business at 345 East Main Street, Warsaw, Indiana 46580, and Zimmer, Inc. is a 

Delaware corporation having a principal place of business at 1800 West Center Street, Warsaw, 

Indiana 46581-0708.

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15. This Court also has personal jurisdiction over CeramTec because CeramTec

induces Biomet, DePuy, and Zimmer to commit patent infringement in this district, including 

inducing Biomet, DePuy, and Zimmer to use, sell, offer to sell, and import BIOLOX® Delta 

ceramics in this district, which BIOLOX® Delta ceramics infringe the ’584 patent.

16. Venue is proper in this judicial district pursuant to 28 U.S.C. §§ 1391(b)(2), 

1391(c)(3), and 1400(b). The acts giving rise to CeraMedic’s claims for patent infringement 

occurred and continue to occur in this district, and CeramTec, which is not resident in the United 

States, may be sued in any judicial district.

COUNT I – INFRINGEMENT OF THE ’584 PATENT

17. CeraMedic realleges and incorporates by reference each of the preceding 

paragraphs.

18. On information and belief, CeramTec, directly or through the actions of their 

employees, divisions, and/or subsidiaries, has infringed and continues to infringe the ’584 patent 

directly, literally, and/or by equivalents.

19. On information and belief, CeramTec has infringed and continues to infringe the

’584 patent literally and/or by equivalents under 35 U.S.C. § 271(a) by, among other things,

offering for sale and selling BIOLOX® Delta ceramics to at least Biomet, DePuy, and Zimmer in 

this District.

20. On information and belief, CeramTec has infringed and continues to infringe the 

’584 patent literally and/or by equivalents under 35 U.S.C. § 271(g) by, among other things, 

offering for sale and selling BIOLOX® Delta ceramics manufactured by CeramTec outside of 

the United States to at least Biomet, DePuy, and Zimmer in this District, which manufacture by 

CeramTec would infringe the ’584 patent if it occurred in the United States.

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21. On information and belief, CeramTec has induced and continues to induce

infringement of the ’584 patent literally and/or by equivalents under 35 U.S.C. § 271(b) by, 

among other things, encouraging and intending at least Biomet, DePuy, and Zimmer to import 

BIOLOX® Delta ceramics in this district and to use, sell, and offer to sell BIOLOX® Delta 

ceramics in this district and in the United States. Such importation, use, sales, and offers for sale 

of BIOLOX® Delta ceramics by at least Biomet, DePuy, and Zimmer in the United States 

constitute infringement of the ’584 patent under 35 U.S.C. § 271(a) and 35 U.S.C. § 271(g). 

22. On information and belief, CeramTec has proceeded in this manner despite actual 

knowledge of the ’584 patent and of the ’584 patent’s coverage of BIOLOX® Delta ceramics, as

described above in paragraph 9. At a minimum, CeramTec would have to have taken deliberate 

actions to avoid confirming the high probability that at least Biomet’s, DePuy’s, and Zimmer’s 

importation, use, sales, and/or offers for sale of BIOLOX® Delta ceramics in the United States 

constitute infringement of the ’584 patent, such that CeramTec has been and continues to be 

willfully blind. 

23. CeramTec’s sales of BIOLOX® Delta in the United States; CeramTec’s offers to 

sell BIOLOX® Delta in the United States; and CeramTec’s inducement of at least Biomet, 

DePuy, and Zimmer to import, use, offer to sell, and sell BIOLOX® Delta in the United States 

occurred despite the objectively high likelihood that CeramTec’s actions constituted 

infringement of the ’584 patent, which is valid and enforceable.

24. The objectively high likelihood that CeramTec’s actions constituted infringement 

of the ’584 patent was also either actually known by CeramTec or so obvious that CeramTec 

should have known prior to the filing date of this Complaint.

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25. First, as described above in paragraph 9, CeramTec had actual notice of the ’584 

patent at least as of December 8, 2005, knew the ’584 patent potentially covered BIOLOX® 

Delta ceramics, and previously recognized the value of the ’584 patent family.

26. Second, CeraMedic previously initiated a lawsuit against CeramTec in the District 

of South Carolina on August 1, 2014 for infringement of the ’584 patent by CeramTec’s sales 

and offers to sell BIOLOX® Delta. CeraMedic LLC v. CeraMedic GmbH and CeramTec North 

America Corp., Civil Action No. 6:14-03104-TMC (D.S.C.) (Dkt. No. 1). In lieu of having the 

District of South Carolina action transferred to this Court, counsel for CeraMedic and counsel for 

CeramTec agreed that CeraMedic would refile the allegations contained in its August 1, 2014 

complaint in this District and that CeraMedic would voluntarily dismiss its lawsuit in the District 

of South Carolina without prejudice.

27. Thus, at least as of August 1, 2014—and, on information and belief, before 

August 1, 2014—CeramTec’s infringement of the ’584 patent is and has been willful and 

deliberate. Further, CeramTec’s continued infringement after the filing of this Complaint shall 

constitute willful and deliberate infringement of the ’584 patent.

DAMAGES AND RELIEF

28. As a consequence of CeramTec’s infringement of the ’584 patent, CeraMedic has 

been damaged in an amount not yet determined and will suffer additional irreparable damage 

unless CeramTec’s infringing acts are enjoined by this Court.

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PRAYER FOR RELIEF

WHEREFORE, CeraMedic respectfully requests that the Court enter judgment against 

CeramTec:

A. Determining that CeramTec has infringed and continues to infringe one or more 

claims of the ’584 patent;

B. Preliminarily and permanently enjoining CeramTec, its respective officers, 

agents, servants, directors, employees, and attorneys, and all persons acting in concert or 

participation with it, directly or indirectly, or any of them who receive actual notice of the 

judgment, from further infringing the ’584 patent;

C. Ordering CeramTec to account for and pay to CeraMedic all damages suffered by 

CeraMedic as a consequence of CeramTec’s infringement of the ’584 patent, together with all 

pre-judgment and post-judgment interest and costs as fixed by the Court;

D. Trebling or otherwise increasing CeraMedic’s damages under 35 U.S.C. § 284 on 

the grounds that CeramTec’s infringement of the ’584 patent was deliberate and willful;

E. Declaring that this case is exceptional and awarding CeraMedic its costs and 

reasonable attorneys’ fees in accordance with 35 U.S.C. § 285; and

F. Granting CeraMedic such other and further relief as the Court may deem just and 

proper.

JURY DEMAND

Pursuant to Rule 38 of the Federal Rules of Civil Procedure, CeraMedic hereby requests 

a trial by jury for all issues so triable.

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Dated: October 17, 2014 By: /s/ Kevin K. McNish

John M. Desmarais (pro hac vice forthcoming)

Email: jdesmarais@desmaraisllp.com

Laurie Stempler

Email: lstempler@desmaraisllp.com

Kevin K. McNish

Email: kmcnish@desmaraisllp.com

DESMARAIS LLP

230 Park Avenue

New York, NY 10169

Telephone: (212)-351-3400

Facsimile: (212)-351-3401

James M. Lewis (15784-71)

jlewis@thklawfirm.com

Michael J. Hays (23606-71)

mhays@thklawfirm.com

TUESLEY HALL KONOPA LLP

212 E. LaSalle Avenue, Suite 100 

South Bend, IN 46617 

Telephone: 574-232-3538 

Facsimile: 574-232-3790

Attorneys for CeraMedic LLC

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