United States District Court, D. Delaware
E. Farnan, FARNAN LLP, Wilmington, DE James R. Muldoon,
HARRIS BEACH PLLC, Syracuse, NY Neal L. Slifkin, Laura W.
Smalley, Steven P. Nonkes, HARRIS BEACH PLLC, Pittsford, NY
Attorneys for Plaintiff.
W. Whetzel, Chad M. Shandler, Todd Coomes, Jason J. Rawnsley,
RICHARDS, LAYTON & FINGER, PA., Wilmington, DE Ronald E.
Cahill, Paul J. Cronin, James C. Hall, Heather B. Repicky,
Alison C. Casey, NUTTER, MCCLENNEN & FISH LLP, Boston, MA
Tim F. Williams, DORITY & MANNING, Greenville, SC
Attorneys for Defendants.
U.S. DISTRICT JUDGE
April 25, 2013, Greatbatch filed this patent infringement
action. To date it has involved (among other things) two jury
trials on the validity of four patents - the '095 patent,
the '627 patent, the '715 patent, and the '779
patent - and on infringement of those patents by AVX's
Frontier, NG3, and Ingenio filtered feedthroughs
("FFTs"), some of which come in multiple
October 3, 2017, the Court held a bench trial on AVX's
equitable defense of estoppel, by which AVX seeks to bar
Greatbatch from recovering damages for infringement of U.S.
Patent Nos. 5, 908, 627 and 5, 333, 095. (See D.I.
1090 (hereinafter, "Bench Tr."))
before the Court is AVX's request that Greatbatch be
barred from recovery for infringement of the '627 and
'095 patents, or at a minimum, barred from recovery on
Greatbatch's price erosion theory due to estoppel. (D.I.
was completed on November 21, 2017 (see D.I. 1084,
1098, 1103), and the Court heard oral argument on January 18,
2018 (see D.I.) ("Tr."). Having carefully
considered the record and the parties' arguments, and for
the reasons discussed below, the Court will deny AVX's
request to bar Greatbatch. Pursuant to Federal Rule of Civil
Procedure 52(a), and after having considered the entire
record in this case and the applicable law, the Court
concludes that AVX has failed to prove its affirmative
defense of equitable estoppel.
Court's findings of fact and conclusions of law are set
forth in detail below.
The Parties, Patents, and Products
Plaintiff Greatbatch Ltd. ("Greatbatch") has its
principal place of business in Clarence, New York. (Frustaci
2016 Tr. at 259)
Defendant AVX Corporation has its principal place of business
in Greenville, South Carolina. (Lawing 2016 Tr. at 1276)
Defendant AVX Filters Corporation, a subsidiary of AVX
Corporation, is located in Sun Valley, California. (See
Id. at 1280, 1282, 1292)
United States Patent No. 5, 905, 627 (the '"627
Patent"), entitled "Internally Grounded Feedthrough
Filter Capacitor, " was issued by the United States
Patent & Trademark Office to named inventors Richard L.
Brendel ("Brendel") and Robert A. Stevenson
("Stevenson") on May 18, 1999. (PTX-1)
United States Patent No. 5, 333, 095 (the '"095
Patent"), entitled "Feedthrough Filter Capacitor
Assembly for Human Implant, " was issued by the United
States Patent & Trademark Office to named inventors
Robert A. Stevenson and Donald N. Pruett on July 26, 1994.
accused products are filtered feedthroughs ("FFTs")
made for Boston Scientific Corporation ("BSC") for
the Frontier, Ingenio and NG3 programs. Frontier was a
feedthrough for use in a defibrillator. (See
Panlener 2016 Tr. at 511) Ingenio was a low-voltage filtered
feedthrough for use in a pacemaker. (See Id. at
1412) NG3 was a feedthrough filter capacitor for a
defibrillator. (See id.) NG3 had the same style of
filtering array as Frontier, but with two more pins. (See
Id. at 1409)
The Parties' Prior Correspondence
Prior to the commencement of this litigation on April 25,
2013, for nearly a decade Greatbatch and AVX had engaged in
correspondence regarding Greatbatch's assertions of
infringement. (See DTX-2008, DTX-2013, DTX-2015,
DTX-2052, DTX-2055, DTX-2058, DTX-2060, DTX-2062, DTX-2067,
December 5, 1997, Greatbatch's predecessor (Maxwell
Technologies, Inc. (hereinafter, "Maxwell")) sent a
letter advising AVX that a patent application unrelated to
the patents in suit had been allowed by the U.S. Patent and
Trademark Office. (DTX-2008; Slavitt Bench Tr. at 16) AVX
concedes this was simply a notice letter. (See
Slavitt Bench Tr. at 16)
three years later, in January 2001, Maxwell sent AVX a letter
advising it about: (1) the '627 patent, which covered an
internally grounded filter; and (2) U.S. Pat. No. 5, 978, 204
(the '"204 patent"), which is not at issue in
this litigation. (See DTX-2013; Slavitt Bench Tr. at
16-17) The letter requested AVX cease manufacture or explain
why AVX believed its products did not fall within the scope
of the claims. (DTX-2013) On January 17, 2001, AVX's
outside counsel, Dority & Manning, advised Maxwell that
its January 9 letter had been referred to it for a response.
(DTX-2015; Slavitt Bench Tr. at 17)
receipt of the January 2001 letter, AVX reviewed the
contentions with respect to a product that AVX was working on
at that time for Guidant (a predecessor of BSC) and, after
consultation with counsel, determined there was no
infringement. (See PTX-4038; Slavitt Bench Tr. at
There was no further correspondence between Greatbatch and
AVX until 2004.
August 18, 2004, Greatbatch wrote AVX, noting that it had
previously informed AVX regarding infringement concerns
relating to the '204 patent and that the patent had
undergone reexamination. (DTX-2052) The letter also raised a
potential concern regarding an EMI filter AVX sold to St.
Jude Medical for its Integrity and Victory product lines,
relating to both the "204 patent and U.S. Patent No. 6,
765, 779 (the "779 patent"). (Id.)
Greatbatch's August 18, 2004 letter also provided notice
to AVX that it owned various other patents related to FFT
assemblies, including the '095 patent and the '627
patent, among others. (DTX-2052) The letter did not accuse
any AVX product of infringing those patents, but requested
AVX "confirm whether or not [its] activities infringe
[the '204 patent's] claims as well as those in [the
'779 patent], among the others listed above."
September 16, 2004, AVX responded, explaining that, according
to AVX, its products made for St. Jude did not infringe the
'204 or the '779 patent, as AVX believed both patents
were invalid due to prior sales. (DTX-2055) The letter also
informed Greatbatch that AVX had, in 2001, "diligently
studied the issues with patent counsel, and determined that
there was no infringement of the '627 patent...."
(Id.) The letter did not address the '095 patent
or allege that the '627 patent was invalid.
Greatbatch's responding letter, dated October 18, 2004,
discussed the '204 and '779 patents, but did not
mention either the '095 or the '627 patent.
parties' correspondence continued through 2004 and 2005
(see, e.g., DTX- 2060; DTX-2062; DTX-2067; DTX-2068;
Slavitt Bench Tr. at 20), but the last letter regarding
alleged infringement of the '627 patent was in 2004, over
four years before AVX sold a Frontier FFT with an internal
ground. (See DTX-2055)
2008, the parties exchanged letters regarding U.S. Patent No.
5, 973, 906. (DTX-2092; DTX-2097) These letters did not
address infringement or validity of the '095 or '627
patents. (See id.)
its letter addressing the '906 patent on November 10,
2008, AVX also suggested that there was "an emerging
pattern of the assertion of patent rights without a good
faith basis to do so . . . [and] such action can constitute
an unfair or deceptive trade practice." (DTX-2097;
see Scalise Bench Tr. at 147) Greatbatch did not
reply to this letter. (See Slavitt 2017 Bench Tr. at
23; Scalise 2017 Bench Tr. at 147)
The Parties and BSC
Greatbatch entered into a Supply Agreement with BSC in 2007.
July of 2007, BSC approached AVX regarding work on developing
new filter designs, and thereafter, AVX began design and
development of the Frontier FFT. (See Panlener 2016
Tr. at 1388-89, 1391-92; DTX-147)
September 2007, BSC told AVX that AVX would be a second
source to Greatbatch ...