Richard L. Horwitz, Esquire and David E. Moore, Esquire, of POTTER ANDERSON & CORROON LLP, Wilmington, Delaware.
Kimberly N. Van Voorhis, Esquire; of MORRISON & FOERSTER, LLP, Palo Alto, California. James Bennett, Esquire and Daniel Zlatnik, Esquire, of MORRISON & FOERSTER, LLP, San Francisco, California.
Karen L. Hagberg, Esquire, of MORRISON & FOERSTER, LLP, New York, New York.
Ronald J. Kohut, Esquire and Laura L. Kohut, Esquire, of KOHUT & KOHUT LLP, Costa Mesa, California. Attorneys for Plaintiff.
Richard D. Kirk, Esquire and Stephen B. Brauerman, Esquire, of BAYARD, P. A., Wilmington, Delaware.
Mark L. Levine, Esquire, Chris Lind, Esquire, and Christopher Landgraff, Esquire, of BARTLIT BECK HERMAN PALENCHAR & SCOTT LLP, Chicago, Illinois.
Nosson D. Knobloch, Esquire, of BARTLIT BECK HERMAN PALENCHAR & SCOTT LLP, Denver, Colorado.
Stanley L. Amberg, Esquire, Chappaqua, New York. Attorneys for Defendant.
STARK, U.S. District Judge
In this patent infringement action, the Court held jury trials in December 2010 and May 2012, as well as a bench trial in May 2012. Pending before the Court is the issue of the viability of the jury's verdicts of infringement under the doctrine of equivalents, in light of prosecution history estoppel. This dispute was the subject of the bench trial.
A. The Parties
Plaintiff ICU Medical, Inc. ("ICU") filed its complaint against Defendant RyMed Technologies, Inc. ("RyMed") on July 27, 2007, alleging infringement of United States Patent Nos. 5, 865, 866 (the '"866 patent"); 5, 873, 862 (the '"862 patent"); 5, 928, 204 (the '"204 patent"); and 6, 572, 592 (the '"592 patent") (collectively, "the patents-in-suit"), pursuant to 35 U.S.C. § 271. (D.I. 1) All of the patents-in-suit share a common specification.
B. The Pleadings
Rymed filed an answer and counterclaims on October 12, 2007 (D.I. 14), and ICU answered the counterclaims on November 1, 2007 (D.I. 20). Following other amendments, Rymed's second amended answer and counterclaims was deemed filed on December 16, 2009 (D.I. 359), and ICU responded to the amended counterclaims on January 11, 2010 (D.I. 379). In its second amended answer, Rymed raised various affirmative defenses, including prosecution history estoppel.
C. The Patents-In-Suit, ICU's Products, and Rymed's Accused Products
This case was previously assigned to the Honorable Joseph J. Farnan, Jr., now retired, who construed the disputed claim terms in December 2009. (D.I. 297) The patents-in-suit relate to needleless intravenous medical connector valves. (D.I. 296 at 1) As noted by Judge Farnan in his claim construction opinion:
Such valves are used to facilitate both the transmission of medication and fluids into a patient's bloodstream, as well as the withdrawal of a patient's blood. Before the patents-in-suit, the traditional technique for changing or adding fluid bags to an existing intravenous line required the insertion of an external needle into a needle access port, which was then connected to the existing intravenous line. Numerous problems existed with this traditional practice, for example, detachment of the needle, or contamination of the needle posed serious safety risks to patients, and accidental needle sticks posed the risk of infection to medical personnel.
ICU's products are known as the CLAVE and MicroCLAVE. Rymed's accused product is known as the InVision-Plus. ICU accuses of infringement both Rymed's original InVision-Plus as well as a modified version of the In-Vision-Plus with a helical boot.
D. The Trials
1. December 2010 Jury Trial
Between December 13 and 17, 2010, the Court held a jury trial on the issues of infringement, validity, and willfulness. (See D.I. 516-520) ("Trial Tr. I") The December 2010 jury found that RyMed's original InVision-Plus product literally infringed the asserted claims of both the '866 and '862 patents; specifically, the original InVision-Plus product literally infringed claims 1, 3, and 6 of the '866 patent as well as claim 2 of the '862 patent. (D.I. 498, questions 1 &5)
With respect to Rymed's "modified" InVision-Plus with a helical boot, the jury found literal infringement of dependent claims 3 and 6 of the '866 patent but no literal infringement of independent claim 1 of the '866 patent. (D.I. 498, question 2) The jury also found literal infringement of claim 2 of the '862 patent. (Id., question 6) The jury found infringement under the doctrine of equivalents for each asserted claim; i.e., claims 1, 3, and 6 of the '866 patent as well as claim 2 of the '862 patent. (Id., questions 3 & 7)
Following trial, the Court found that the jury's verdicts with respect to literal infringement of the '866 patent by the modified InVision-Plus were inconsistent, because the jury found no literal infringement of independent claim 1 but did find literal infringement of claims 3 and 6 - both of which depended from claim 1 and, necessarily, included all of the limitations of claim 1. (See Transcript of 9/16/11 hearing (D.I. 527) (hereinafter ("9/16/11 Tr.") at 50-51; D.I. 524) Accordingly, the Court granted ICU's motion for a new trial regarding literal infringement of claims 1, 3, and 6 of the '866 patent by the modified InVision-Plus product. (D.I. 524)
At the same time, the Court denied RyMed's motion for a new trial with respect to literal infringement of claim 2 of the '862 patent. (D.I. 524; see also 9/16/11 Tr. at 51-52) RyMed argued that the jury's finding of literal infringement of this claim could not be reconciled with the jury's finding that the modified InVision-Plus did not literally infringe claim 1 of the '866 patent. (See D.I. 506 at 10-11) The Court disagreed, finding that there was substantial evidence supporting the jury's finding of literal infringement of claim 2 of the '862 patent and that there was no inconsistency requiring a new trial on the '862 patent. (See D.I. 524; 9/16/11 Tr. at 52-53)
2. May 2012 Jury Trial
Between May 7 and 9, 2012, the Court held a jury trial to consider literal infringement of claim 1 of the '866 patent by the modified InVision-Plus product. (See D.I. 563-565) ("Trial Tr. II") As the Court instructed the jury, "the only disputed [factual] issue [was] whether RyMed's accused InVision-Plus product contains a 'seal comprising a series of O-ring elements stacked together to form a unitary structure."' (D.I. 559; see also D.I. 563, Trial Tr. II at 18; D.I. 565, Trial Tr. II at 506) The jury found ...