Opinion
Case No. 04-81178-CIV-MIDDLEBROOKS/JOHNSON.
September 2, 2005
ORDER GRANTING IN PART AND DENYING IN PART DEFENDANT'S MOTION FOR SUMMARY JUDGMENT
THIS CAUSE comes before the court upon Defendant Ethicon Endo-Surgery Inc.'s Motion for Summary Judgment [DE #61], filed June 27, 2005. The Court has reviewed the record and is otherwise fully advised in the premises.
FACTUAL BACKGROUND
Plaintiff White Water Investments, Inc. (White Water) owns U.S. patent 6,214,045 (the `045 patent). The patent concerns a resorbable breast implant which is sized and shaped to replace excised tissue, support the surrounding tissue after implementation, and permit the in-growth of fibrous replacement tissue. See U.S. Patent No. 6,214,045 (issued April 10, 2001). The patent covers implants made of self-expanding biocompatible material which provide a framework for the tissue's regrowth. The purpose of this invention is to provide an implant that replaces excised tissue while eliminating encapsulation and reducing scaring. Id.
White Water alleges that Defendant Ethicon Endo-Surgery (EES) infringes on the `045 patent by manufacturing and selling two products: the MammoMark and CorMark. Specifically, White Water alleges that these products violate claims 9-11, 16, 17-20, and 22-24 of the `045 patent. MammoMark and CorMark are composed of a dehydrated collagen plug embedded with a non-resorbable, x-ray visible titanium clip. Pretrial Stip., at 10. After insertion, the MammoMark and CorMark expand by absorbing fluid. The titanium clip serves as a marker identifying the area where a biopsy has occurred. The MammoMark is manufactured in both 8 gauge and 11 gauge sizes, while the CorMark is manufactured in 14 gauge size. Pretrial Stip., at 3. EES sells both MammoMark and CorMark for use in hospitals and medical offices, including hospitals and medical offices in Florida.
In its motion for summary judgment, the Defendant argues both that its products do not infringe on the `045 patent and that the `045 patent is invalid because it is anticipated by two previous patents.
LEGAL STANDARD
Summary judgment is appropriate only when there are no genuine issues of material fact and the movant is entitled to judgment as a matter of law. See Fed.R.Civ.P. 56(c); Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986). The moving party bears the burden of meeting this exacting standard. See Adickes v. S.H. Kress Co., 398 U.S. 144, 157 (1970). In applying this standard, the evidence, and all reasonable factual inferences drawn therefrom, must be viewed in the light most favorable to the non-moving party. See Arrington v. Cobb County, 139 F.3d 865, 871 (11th Cir. 1998); Allen v. Tyson Foods, Inc., 121 F.3d 642, 646 (11th Cir. 1997).
The non-moving party, however, bears the burden of coming forward with evidence of each essential element of their claims, such that a reasonable jury could find in their favor. See Earley v. Champion Int'l Corp., 907 F.2d 1077, 1080 (11th Cir. 1990). The non-moving party "[m]ay not rest upon the mere allegations and denials of [its] pleadings, but [its] response . . . must set forth specific facts showing that there is a genuine issue for trial." FED. R. CIV. P. 56(e). "The mere existence of a scintilla of evidence in support of the [non-movant's] position will be insufficient; there must be evidence on which the jury could reasonably find for the [non-movant]." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 252 (1986). The failure of proof concerning an essential element of the non-moving party's case necessarily renders all other facts immaterial and requires the court to grant the motion for summary judgment. See Celotex, 477 U.S. at 322.
If the record presents factual issues, the Court must not decide them; it must deny the motion and proceed to trial. See Environmental Defense Fund v. Marsh, 651 F.2d 983, 991 (5th Cir. 1981). Summary judgment may be inappropriate even where the parties agree on the basic facts, but disagree about the inferences that should be drawn from these facts. See Lighting Fixture Elec. Supply Co. v. Continental Ins. Co., 420 F.2d 1211, 1213 (5th Cir. 1969). If reasonable minds might differ on the inferences arising from undisputed facts, then the Court should deny summary judgment. See Impossible Electronic Techniques, Inc. v. Wackenhut Protective Sys., Inc., 669 F.2d 1026, 1031 (5th Cir. 1982); see also Anderson Liberty Lobby, Inc., 477 U.S. 242, 248 (1986) ("[T]he dispute about a material fact is genuine,' . . . if the evidence is such that a reasonable jury could return a verdict for the non-moving party.").
Patent infringement analysis occurs in two steps. First, the Court determines the scope and meaning of the patent claims as a matter of law. N. Am. Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335, 1344 (Fed. Cir. 2005). Then the allegedly infringing device or method is compared to the properly construed claims. Id. Whether the accused device meets the limitations of the construed claims is a question of fact. Id.; Bai v. L L Wings Inc., 160 F.3d. 1350, 1353 (Fed. Cir. 1998). In order for White Water to prove infringement on a patent claim, it must prove that every claim limitation, or its equivalent, is found in the accused device or method. N. Am. Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d at 1344; CVI/Beta Ventures, Inc. V. Tura LP, 112 F.3d 1146, 1161 (Fed. Cir. 1998). Thus, if the accused device or method does not meet even one limitation, there is no infringement on that claim as a matter of law. Cybor Corp. v. FAS Techs., Inc. 128 F.3d 1448, 1454 (Fed. Cir. 1998).
Patent infringement can occur in three ways: direct infringement, inducing infringement, and contributory infringement. 35 U.S.C. § 271 (2003). Direct infringement may consist of making, using, selling, or offering to sell a patented invention within the United States. 35 U.S.C. § 271(a) (2003). A "method" claim is directly infringed "only by one practicing the patented method." RE Delaware, Inc. v. Pac. Keystone Techs., 326 F.3d 1255, 1267 (Fed. Cir. 2003) (quoting Joy Techs., Inc. v. Flakt, Inc., 6 F.3d 770, 775 (Fed. Cir. 1993)).
Liability for "inducing infringement" only attaches if the defendant "actively" induced infringement. 35 U.S.C. § 271(b) (2003). "Active" inducement connotes that the defendant "knowingly" induced infringement. Manville Sales Corp. v. Paramount Sys., Inc., 917 F.2d 544, 553 (Fed. Cir. 1990). Federal Circuit case law is unclear as to whether the defendant must only knowingly cause the acts which constitute infringement or whether it must actually intend for infringement to occur. See InsituForm Techs., Inc. v. CAT Contracting, Inc., 385 F.3d 1360, 1378 (Fed. Cir. 2004) (recognizing a lack of clairty); Hewlett-Packard Co. v. Bausch Lomb Inc., 909 F.2d 1464, 1469 (Fed. Cir. 1990); Power Lift, Inc. v. Lang Tools, Inc., 774 F.2d 478, 481 (Fed. Cir. 1985); Manville, 917 F.2d at 553; Nissim Corp. v. Clearplay, Inc., 351 F.Supp.2d 1343, 1348 (S.D.Fla. 2004). However, the Federal Circuit's most recent articulation of the law indicates that "the patentee must show . . . that the alleged infringer knowingly induced infringement and possessed specific intent to encourage another's infringement." MEMC Electronic Materials, Inc. v. Mitsubishi Materials Silicon Corp., No. 04-1396, 04-1513, 2005 WL 2000930 (Fed. Cir. Aug. 22, 2005). The plaintiff may prove intent through circumstantial, rather than direct, evidence. Id.; Water Techs. Corp. v. Calco, Ltd., 850 F.2d 660, 668 (Fed. Cir. 1988). Also, the defendant can induce infringement by providing instructions to customers which, when followed, would lead to infringement. Minnesota Min. Mfg. Co. v. Chemque, Inc., 303 F.3d 1294, 1305 (Fed. Cir. 2002).
"Contributory infringement" liability prohibits selling an "apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent." 35 U.S.C. § 271(c) (2003). Liability for "contributory infringement" requires only proof of the defendant's knowledge, rather than intent, that his activity cause infringement. Hewlett-Packard Co., 909 F.2d at 1469.
Finally, a patent claim may be invalid as "anticipated" where each and every limitation of the claim is found in a single prior art reference. Schering Corp. v. Geneva Pharm. Inc., 339 F.3d 1373, 1377 (Fed. Cir. 2003). A patent is presumed to be valid. 35 U.S.C. § 282 (2002). At trial, the party claiming anticipation must prove by clear and convincing evidence that all the elements of a claim are present in a single prior art reference. Minnesota Min. Mfg. Co, 303 F.3d at 1301; Standard Havens Prod., Inc. v. Gencor Indus. Inc., 953 F.2d 1360, 1368 (Fed. Cir. 1991). However, anticipation is a question of fact. Eolas Technologies v. Microsoft Corp., 399 F.3d 1325, 1332 (Fed. Cir. 2005); In re Hyatt, 211 F.3d 1367, 1371 (Fed. Cir. 2000). Thus, at summary judgment, the question is whether there exists a genuine issue of material fact on the Defendant's ability to meet the clear and convincing standard.
ANALYSIS
INFRINGEMENTThe Court has already construed the `045 patent's relevant claims in an early order. [DE #150]. Even after construing the patent's claims, several factual disputes remain over whether EES's MammoMark and CorMark products meet the claim limitations.
EES first argues that its products cannot infringe on `045 patent claims 9 and 22 because the products are not made "entirely of resorbable material." EES's products consist of a resorbable collagen holding a non-resorbable titanium marker. There is no dispute that the collagen is resorbable and that the titanium marker is not. EES argues that since the titanium marker is not resorbable, its products are not made "entirely" of resorbable material.
The Defendant's argument is based on a flawed construction of the `045 patent. As explained in the Court's order construing the `045 patent, the patent specifically contemplates a non-resorbable substance being introduced into a resorbable implant. According to the Court's construction, only the implant need be "entirely resorbable." The non-resorbable titanium implant is more accurately described as a "diagnostic substance" introduced into the implant, as contemplated in claim 10 or a "radiographic marker" as described in claim 11. Because the non-resorbable titanium marker is a "substance" introduced into the implant, and not the implant itself, it does not need to be resorbable. Thus, Defendant's argument fails.
The Defendant's next argument is that its products are not "self-expanding" as required by claim 17. This argument is also based on a flawed patent construction. There is no dispute that EES's identifiers expand in situ by absorbing bodily fluids. The Defendant argues, however, that the `045 patent applicants limited the definition of "self-expanding" during the patent prosecution to exclude expansion through absorption of fluid. As the Court's patent construction order makes clear, the Defendant failed to demonstrate such a limitation. The Court construed "self-expanding" to include expansion through absorption of bodily fluids. Because EES admits that its identifiers do expand through absorbing bodily fluids, its argument here fails.
The Defendant's third argument is that its products do not "support the surrounding tissue," as required by claims 9, 17, and 22. The Court's construction order defined this phrase to mean "bearing the weight of the tissue surrounding the entire cavity." EES argues that its identifiers do not fill the entire cavity and subsequently cannot support the surrounding tissue. White Water, however, presents some evidence indicating that the EES products meet this limitation. First, White Water points to press releases from MammoMark's original manufacturer, which states that the MammoMark "expands to the size and shape of the biopsy cavity." Second, White Water's expert Dr. John Corbitt testifies that pathology slides he received after implanting a MammoMark into a breast following a biopsy procedure indicate that the MammoMark had filled the biopsy cavity and was supporting the surrounding tissue. This evidence at least creates a genuine issue of material fact on the question of whether EES's products "support the surrounding tissue." Thus, summary judgment is inappropriate.
Finally, the Defendant argues that its identifiers do not allow for in-growth of fibrous tissue, as required by claims 9, 17, and 22. The Court has construed this phrase to mean "allowing for the development or proliferation of connective tissue elements and fibers inward into the resorbable material." EES argues that White Water has produced no evidence that its products allow for such in-growth. EES specifically points to a pathology slide which Dr. Corbitt admitted showed no in-growth. However, White Water does present other evidence suggesting that EES's products would allow in-growth. In addition to EES marketing materials indicating the potential for such growth, White Water's expert Dr. Edward Dauer testified that the MammoMark and CorMark are engineered to allow for in-growth. Dr. Dauer cites two independent studies, as well as a Scanning Electron Microscopy examination, to support his opinion. Thus, White Water has presented sufficient evidence to create a genuine issue of material fact, precluding summary judgment on this issue.
DIRECT INFRINGEMENT. INDUCING INFRINGEMENT AND CONTRIBUTORY INFRINGEMENT
White Water cannot prove that EES has committed "direct infringement" of claims 9 and 22. As established above a "method" claim is directly infringed "only by one practicing the patented method." RF Delaware, Inc. v. Pac. Keystone Techs., 326 F.3d 1255, 1267 (Fed. Cir. 2003) (quoting Joy Techs., Inc. v. Flakt, Inc., 6 F.3d 770, 775 (Fed. Cir. 1993)). Claims 9 and 22 each patent a method of replacing breast tissue. White Water has presented no evidence that EES itself practices the methods patented in claims 9 and 22. Therefore, as a matter of law, EES cannot be liable for direct infringement of claims 9 and 22, or any of the claims dependent on claims 9 and 22. EES may still be liable for infringing on claims 17, 19 and 20 on a direct infringement theory.
White Water has, however, presented sufficient evidence to proceed on an inducement or contributory infringement theory. White Water has presented sufficient circumstantial evidence for a jury to find that EES knew about `045 patent and knew or should have known that using its identifiers would lead to infringement. Specifically, White Water has pointed to evidence of a joint study between the `045 patentees and EES to commercialize the `045 patent. White Water has also presented evidence that EES knew that the original developers of the MammoMark and CorMark were engaged in licensing discussions with the `045 patentees before EES acquired them. This circumstantial evidence is at least sufficient for a fact finder to find EES liable under a contributory infringement theory.
While proving inducement is more difficult than proving contributory infringement, because the plaintiff must prove an intent to cause infringement, White Water has at least presented enough evidence to preclude summary judgment. The intent to cause infringement can be proved by circumstantial evidence. White Water has presented evidence that EES provides instructions on how to use their products. If White Water's evidence shows that EES's products necessarily lead to infringement of the `045 patent, and its circumstantial evidence shows that EES knew that infringement would occur, then a reasonable fact finder could determine that EES had the requisite intent for inducing infringement.
ANTICIPATION
EES argues that all of the relevant claims of the `045 patent are anticipated by two earlier patents, and thus invalid. Specifically, EES points to U.S. Patent No. 5,326,350 ("the Li patent") and U.S. Patent No. 5,716,404 ("the `404 patent"). However, genuine issues of material fact exist as to both patents, precluding summary judgment.
A key part of each relevant claim of the `045 patent is that the implant involved supports the surrounding tissue. EES asserts that the Li patent discloses an implant that fills the cavity created by cosmetic and plastic surgery. However, White Water's expert Dr. Dauer testifies that the collagen used in the Li patent's invention could not provide the support function required by the `045 patent. Specifically, he testifies that while the Li patent collagen is engineered to create "platelet adhesion," the collagen in the `045 patent must be designed in an opposite way in order to support the surrounding tissue. See Dauer Decl. at 21. EES's only response on this point refers to White Water statements about the properties of collagen or sponges generally, without reference to the specific collagen described in the Li patent. Thus, Dr. Dauer's testimony casts sufficient doubt on EES's argument to preclude a finding of anticipation at summary judgment.
EES argues only that the `404 patent anticipates claim 17 of the `045 patent. A critical limitation of claim 17 is that the implant be "self-expanding." However, nothing in the `404 patent itself, or in EES's briefs, demonstrate or suggest that the `404 patent's invention is "self-expanding." At the very least, there are factual issues regarding whether the `404 patent anticipates claim 17. Thus, it is hereby
ORDERED AND ADJUDGED that Defendant's Motion for Summary Judgment [DE #61] is GRANTED IN PART to the extent that White Water charges EES with direct infringement of claims 9, 10, 11, 16, 22, 23, and 24. With respect to all other claims and theories, the Defendant's Motion for Summary Judgment is DENIED.
Thus, Count I of the complaint is dismissed with regards to patent claims 9, 10, 11, 16, 22, 23, and 24. Count I survives, however, with regards to patent claims 17, 18, 19, and 20.
DONE AND ORDERED in Chambers in West Palm Beach, Florida, this 2 day of September 2005.