United States District Court, D. Delaware
INTEGRA LIFESCIENCES CORP., INTEGRA LIFESCIENCES SALES LLC, CONFLUENT SURGICAL, INC., and INCEPT LLC, Plaintiffs,
HYPERBRANCH MEDICAL TECHNOLOGY, INC., Defendant.
LEONARD P. STARK, UNITED STATES DISTRICT JUDGE
Magistrate Judge Burke issued a 16-page Report and
Recommendation ("Report") (D.I. 512), dated
February 22, 2018, recommending that the Court deny Defendant
HyperBranch Medical Technology, Inc's
("Defendant" or "HyperBranch") motion for
summary judgment of non-infringement of claims 4, 6, and 13
of the '3705 patent (D.I. 393);
on March 5, 2018, HyperBranch objected to the Report (D.I.
534) ("Objections" or "Objs."),
contending it failed to address a claim construction dispute
surrounding the term "precursor" and, thus,
improperly left a question of law to be resolved by the jury;
on March 15, 2018, Plaintiffs Integra LifeSciences Corp.,
Integra LifeSciences Sales LLC, Confluent Surgical, Inc., and
Incept LLC (collectively, "Plaintiffs" or
"Integra") responded to HyperBranch's
Objections (D.I. 559) ("Response" or
the Court has considered the parties' objections and
responses de novo, see St. Clair Intellectual
Prop. Consultants, Inc. v. Matsushita Elec. Indus. Co.,
Ltd., 691 F.Supp.2d 538, 541-42 (D. Del. 2010); 28
U.S.C. § 636(b)(1); Fed.R.Civ.P. 72(b);
THEREFORE, IT IS HEREBY ORDERED that:
HyperBranch's Objections (D.I. 534) are OVERRULED, Judge
Burke's Report (D.I. 512) is ADOPTED, and Defendant's
motion (D.I. 393) is DENIED.
HyperBranch contends that the Report "incorrectly seeks
to have the jury resolve a question of claim scope regarding
the term 'precursor.'" (Objs. at 1) According to
HyperBranch, under a proper construction of the term,
"there is no factual dispute regarding
non-infringement." (Id.) The Court is not
asserted claims of the '3705 patent recite the formation
of a hydrogel by mixing three precursors. During claim
construction, the Court adopted HyperBranch's proposed
construction of "precursor" as "a polymer,
functional polymer, macromolecule, small molecule, or
crosslinker that can take part in a reaction to form a
network of crosslinked molecules." (D.I. 379 at 10-11)
The parties dispute how to apply this construction.
HyperBranch contends that one polymer is one precursor (Objs.
at 4), while Integra contends that "a precursor can be a
crosslinker that can take part in a reaction to form a
network of crosslinked molecules" (Resp. at 3). The
Report found this dispute to be one of fact, as "each
side's expert has a different view of how the person of
ordinary skill would assess the number of precursors" in
HyperBranch's products. (Report at 14) HyperBranch
objects to the Report's conclusion, asserting this
"question of claim scope" is a question of law for
the Court that "must be addressed at this juncture"
rather than being left to a jury. (Objs at 4-5) The Court
agrees with the Report.
the Report correctly stated, "the parties are really
fighting about a fact issue relating to the application of
th[e] construction [of 'precursor'] - i.e., whether
the person of ordinary skill would view the polymer Lupasol
as one precursor and one precursor only, or whether such a
person would instead look to the crosslinking molecules
making up that polymer as amounting to individual
precursors." (Report at 13) HyperBranch insists there is
no justification for treating two polydisperse polymers
differently for purposes of the precursor limitation and
requests that the Court "clarify the scope of the term
'precursor' as a matter of claim construction to
acknowledge that one polymer is one 'precursor, '
regardless of whether the polymer is cast as being 'a
polymer, functional, polymer, macromolecule, small molecule,
or crosslinker' under the Court's construction."
(Objs. at 5, 10) However, as the Report accurately stated,
"[t]he Court, in construing the term [precursor], never
stated that 'one polymer is one precursor.'"
(Report at 13 n.9) Whether (within the context of the
'3705 patent) a polymer counts as one precursor and
whether a crosslinker only counts as a precursor when it is
purchased as a standalone material and not found within a
polymer (see D.I. 482 at 63-66, 69-71) are questions
of fact. As both parties reasonably apply the Court's
construction, the ultimate issue of infringement or
non-infringement based on the competing, reasonable
applications is a matter for the jury to decide. "It is,
after all, in the province of the jury to determine the
proper application of the [claim term] limitations to the
accused device." W.L. Gore & Assocs., Inc. v.
C.R. Bard, Ind., 2015 WL 12806483, at *8 (D. Del. Apr.
21, 2015); see also PPG Indus, v. Guardian Indus.
Corp., 156 F.3d 1351, 1355 (Fed. Cir. 1998)
("[A]fter the court has defined the claim with whatever
specificity and precision is warranted by the language of the
claim and the evidence bearing on the proper construction,
the task of determining whether the construed claim reads on
the accused product is for the finder of fact.").
Court recognizes, as HyperBranch emphasizes, that
'"[w]hen the parties present a fundamental dispute
regarding the scope of a claim term, it is the court's
duty to resolve it.'" (Objs. at 1) (quoting
O2Micro Int'l Ltd. v. Beyond Innovation Tech.
Co., 521 F.3d 1351, 1362 (Fed. Cir. 2008)) But that does
not mean that every dispute about the proper application of a
claim term to an accused product is itself a question of law
the Court must resolve. Moreover, the ultimate deadline by
which the Court must fulfill its obligation to construe claim
terms is when it instructs the jury. Accordingly, should
either party here believe it has a good faith basis to ask
the Court to resolve additional claim construction disputes
(as opposed to, for instance, asking the Court to reconsider
a construction dispute it has already resolved), it is free
to ask the Court to do so in connection with the preparation
of jury instructions.
HyperBranch additionally argues that the Report "further
erred by failing to address the inherent ambiguity in
Plaintiffs' application of the Court's construction
of 'precursor, ' which renders the claims
indefinite." (Objs. at 8) To HyperBranch, Integra's
application of the construction of "precursor"
renders the term indefinite because there is no way to
ascertain how many crosslinker precursors are in the PEI used
in the Accused Products. (Objs. at 4-5, 9) However,
Integra's expert, Dr. Jimmy Mays, testified that
"the total number of precursors could be determined
using mass spectrum analysis to identify the different
crosslinkers present." (D.I. 443 at 4-5) This statement
stands unrebutted by HyperBranch. Accordingly, the Court
cannot conclude on this record that a reasonable factfinder
could only find that the challenged patent claims are
indefinite. Summary judgment is not warranted.
Court has considered each of the other arguments raised by
HyperBranch in its Objections de novo and finds that
each of ...