United States District Court, D. Delaware
MEMORANDUM AND ORDER
F. BATAILLON SENIOR UNITED STATES DISTRICT JUDGE
matter is before the Court on the following motions for
summary judgment and motions to preclude testimony:
1. Motion for Summary Judgment of Noninfringement of U.S.
Patent No. 8, 805, 478 for Failure to Satisfy Indirect
Infringement filed by AngioDynamics Inc., Filing No. 248;
2. Motion for Summary Judgment on Limitations of Damages for
Failure to Mark and No. Entitlement to Provisional Rights
Damages filed by AngioDynamics Inc., Filing No. 249;
3. Motion for Summary Judgment Adjudication of Infringement
of '417 Patent and Its Published Patent Application (The
'951 Publication) filed by Bard Peripheral Vascular,
Inc., Filing No. 250;
4. Motion for Summary Judgment Adjudication that the Asserted
Claims are Enabled and Described Under Section 112 and No.
Anticipation Under Section 102 by the Iso-Med Prior Art
Reference filed by Bard Peripheral Vascular, Inc., Filing No.
5. Motion for Summary Judgment Adjudication that the Asserted
Claims of the Patents-ln-Suit Recite Patent Eligible Subject
Matter Under 35 U.S.C. § 101 filed by Bard
Peripheral Vascular, Inc., Filing No. 254;
6. Motion for Summary Judgment of Patent Ineligibility filed
by AngioDynamics Inc., Filing No. 255;
7. Motion for Summary Judgment of Invalidity filed by
AngioDynamics Inc., Filing No. 256; 3
8. Motion to Preclude Expert Testimony of Dr. Vogelzang and
Mr. Bakewell filed by Bard Peripheral Vascular, Inc., Filing
9. Motion to Preclude the Testimony of Matthew Johnson, M.D.
and Timothy Clark, M.D. filed by AngioDynamics Inc., Filing
No. 274; and
10. Motion to Preclude the Testimony of Alan Cox, Ph.D. filed
by AngioDynamics Inc., Filing No. 276.
filed this lawsuit on March 10, 2015, alleging that
AngioDynamics is liable for infringement of three patents:
(1) U.S. Patent 8, 475, 417 (the '"417
Patent"); (2) U.S. Patent 8, 545, 460 (the
'"460 Patent"); and (3) U.S. Patent 8, 805, 478
(the '"478 Patent"). The '417 Patent issued
on July 2, 2013. The application that led to the '417
Patent was published on September 10, 2009 as U.S.
2009/0227951 A1 ("'951 Publication"). The
'951 Publication's claims are substantially identical
to the '417 Patent's claims. The '460 Patent
issued on October 1, 2013. The '478 Patent issued on
August 12, 2014, and contains only method claims.
See Amended Complaint, Filing No. 192.
STANDARD OF REVIEW
court shall grant summary judgment if the movant shows that
there is no genuine dispute as to any material fact and the
movant is entitled to judgment as a matter of law."
Fed. R. Civ. P. 56(a). The moving party bears the
burden of demonstrating the absence of a genuine issue of
material fact. Matsushita Elec. Indus. Co. v. Zenith
Radio Corp., 475 U.S. 574, 586 n. 10 (1986). A party
asserting that a fact cannot be-or, alternatively,
is-genuinely disputed must support the assertion either by
citing to "particular parts of materials in the record,
including depositions, documents, electronically stored
information, affidavits or declarations, stipulations
(including those made for the purposes of the motion only),
admissions, interrogatory answers, or other materials,"
or by "showing that the materials cited do not establish
the absence or presence of a genuine dispute, or that an
adverse party cannot produce admissible evidence to support
the fact." Fed. R. Civ. P. 56(c)(1)(A) &
(B). If the moving party has carried its burden, the
nonmovant must then "come forward with specific facts
showing that there is a genuine issue for trial."
Matsushita, 475 U.S. at 587 (internal quotation
marks omitted). The court will "draw all reasonable
inferences in favor of the nonmoving party, and it may not
make credibility determinations or weigh the evidence."
Reeves v. Sanderson Plumbing Prods., Inc., 530 U.S.
133, 150 (2000).
defeat a motion for summary judgment, the non-moving party
must "do more than simply show that there is some
metaphysical doubt as to the material facts."
Matsushita, 475 U.S. at 586-87. Although the
"mere existence of some alleged factual dispute between
the parties will not defeat an otherwise properly supported
motion for summary judgment," a factual dispute is
genuine where "the evidence is such that a reasonable
jury could return a verdict for the nonmoving party."
Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248
(1986). "If the evidence is merely colorable, or is not
significantly probative, summary judgment may be
granted." Id. at 249-50 (internal citations
omitted); see also Celotex Corp. v. Catrett, 477
U.S. 317, 322 (1986) (stating entry of summary judgment is
mandated "against a party who fails to make a showing
sufficient to establish the existence of an element essential
to that party's case, and on which that party will bear
the burden of proof at trial").
patent is infringed when a person "without authority
makes, uses, offers to sell, or sells any patented invention,
within the United States ... during the term of the
patent." 35 U.S.C. § 271(a). A two-step analysis is
employed in making an infringement determination. See
Markman v. Westview Instruments, Inc., 52 F.3d 967, 976
(Fed. Cir. 1995). First, the court must construe the asserted
claims to ascertain their meaning and scope. See Id.
Construction of the claims is a question of law subject to de
novo review. See Cybor Corp. v. FAS Techs., 138 F.3d
1448, 1454 (Fed. Cir. 1998). The trier of fact must then
compare the properly construed claims with the accused
infringing product. See Markman, 52 F.3d at 976.
This second step is a question of fact. See Bai v. L
& L Wings, Inc., 160 F.3d 1350, 1353 (Fed. Cir.
infringement requires a party to perform each and every step
or element of a claimed method or product." BMC
Res., Inc. v. Paymentech, LP., 498 F.3d 1373, 1378 (Fed.
Cir. 2007), overruled on other grounds by Akamai
Technologies v. Limelight Networks, Inc., 692 F.3d 1301
(Fed. Cir. 2012). "If any claim limitation is absent
from the accused device, there is no literal infringement as
a matter of law." Bayer AG v. Elan Pharm.
Research Corp., 212 F.3d 1241, 1247 (Fed. Cir. 2000). If
an accused product does not infringe an independent claim, it
also does not infringe any claim depending thereon. See
Wahpeton Canvas Co. v. Frontier, Inc., 870 F.2d 1546,
1553 n.9 (Fed. Cir. 1989). However, "[o]ne may infringe
an independent claim and not infringe a claim dependent on
that claim." Monsanto Co. v. Syngenta Seeds,
Inc., 503 F.3d 1352, 1359 (Fed. Cir. 2007) (quoting
Wahpeton Canvas, 870 F.2d at 1552) (internal
quotations omitted). A product that does not literally
infringe a patent claim may still infringe under the doctrine
of equivalents if the differences between an individual
limitation of the claimed invention and an element of the
accused product are insubstantial. See Warner-Jenklnson
Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 24 (1997).
The patent owner has the burden of proving infringement and
must meet its burden by a preponderance of the evidence.
See SmithKline Diagnostics, Inc. v. Helena Lab.
Corp., 859 F.2d 878, 889 (Fed. Cir. 1988) (citations
accused infringer moves for summary judgment of
non-infringement, such relief may be granted only if one or
more limitations of the claim in question does not read on an
element of the accused product, either literally or under the
doctrine of equivalents. See Chimie v. PPG Indus.,
Inc., 402 F.3d 1371, 1376 (Fed. Cir. 2005); see also
TechSearch, LLC. v. Intel Corp., 286 F.3d 1360, 1369
(Fed. Cir. 2002) ("Summary judgment of noninfringement
is ... appropriate where the patent owner's proof is
deficient in meeting an essential part of the legal standard
for infringement, because such failure will render all other
facts immaterial."). Thus, summary judgment of
noninfringement can only be granted if, after viewing the
facts in the light most favorable to the non-movant, there is
no genuine issue as to whether the accused product is covered
by the claims (as construed by the court). See Pitney
Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1304
(Fed. Cir. 1999).
method claim is not directly infringed by the sale of an
apparatus even though it is capable of performing only the
patented method. The sale of the apparatus is not a sale of
the method. A method claim is directly infringed only by one
practicing the patented method." Joy Technologies,
Inc. v. Flakt, Inc., 6 F.3d 770, 775 (Fed. Cir. 1993).
Therefore, "the accused infringer must perform all the
steps of the claimed method, either personally or through
another acting under his direction or control."
Akamai Technologies, Inc. v. Limelight Networks,
Inc., 692 F.3d 1301, 1307 (Fed. Cir. 2012).
respect to apparatus claims, "to infringe a claim that
recites capability and not actual operation, an accused
device 'need only be capable of operating' in the
described mode." Finjan, Inc. v. Secure Computing
Corp., 626 F.3d 1197, 1204 (Fed. Cir. 2010) (citing
Intel Corp. v. U.S. Int'l Trade Comm'n, 946
F.2d 821, 832 (Fed. Cir. 1991). However, if an apparatus
claim requires "software [to] be configured in a
particular way to infringe," infringement does not occur
merely because the apparatus could be used in an infringing
fashion. Finjan, 626 F.3d at 1204-05.
35 U.S.C. § 102(b)
(1) the claimed invention was patented, described in a
printed publication, or in public use, on sale, or otherwise
available to the public before the effective filing date of
the claimed invention; or
(2) the claimed invention was described in a patent issued
under section 151, or in an application for patent published
or deemed published under section 122(b), in which the patent
or application, as the case may be, names another inventor
and was effectively filed before the effective filing date of
the claimed invention."
Federal Circuit has stated that "[t]here must be no
difference between the claimed invention and the referenced
disclosure, as viewed by a person of ordinary skill in the
field of the invention. In determining whether a patented
invention is explicitly anticipated, the claims are read in
the context of the patent specification in which they arise
and in which the invention is described. Glaverbel
Societe Anonyme v. Northlake Mktg. & Supply, Inc.,
45 F.3d 1550, 1554 (Fed. Cir. 1995). The prosecution history
and the prior art may be consulted if needed to impart
clarity or to avoid ambiguity in ascertaining whether the
invention is novel or was previously known in the art.
Id. The prior art need not be ipsissimis verbis
(i.e., use identical words as those recited in the claims) to
be anticipating. Structural Rubber Prods. Co. v. Park
Rubber Co., 749 F.2d 707, 716 (Fed. Cir. 1984).
art reference also may anticipate without explicitly
disclosing a feature of the claimed invention if that missing
characteristic is inherently present in the single
anticipating reference. Continental Can Co. v. Monsanto
Co., 948 F .2d 1264, 1268 (Fed. Cir. 1991). The Federal
Circuit has explained that an inherent limitation is one that
is necessarily present and not one that may be established by
probabilities or possibilities. Id. That is,
"[t]he mere fact that a certain thing may result from a
given set of circumstances is not sufficient."
Id. at 1269. The Federal Circuit also has observed
that "inherency operates to anticipate entire inventions
as well as single limitations within an invention."
Scherlng Corp. v. Geneva Pharms. Inc., 339 F.3d
1373, 1380 (Fed. Cir. 2003). Moreover, recognition of an
inherent limitation by a person of ordinary skill in the art
before the critical date is not required to establish
inherent anticipation. Id. at 1377. An anticipation
inquiry involves two steps. First, the court must construe
the claims of the patent in suit as a matter of law. Key
Pharms. v. Hereon Labs Corp., 161 F.3d 709, 714 (Fed.
Cir. 1998). Second, the finder of fact must compare the
construed claims against the prior art. Id. A
finding of anticipation will invalidate the patent.
Applied Med. Res. Corp. v. U.S. Surgical Corp., 147
F.3d 1374, 1378 (Fed. Cir. 1998).
Motion for Summary Judgment of Noninfringement of U.S.
Patent No. 8, 805, 478 for Failure to Satisfy Indirect
Infringement filed by AngioDvnamics Inc., Filing No. 248
moves for summary judgment of noninfringement, contending
that Bard has failed to show a prima facie infringement.
Further, AngioDynamics argues that Bard has failed to
demonstrate that the Smart Port CT and Smart Port LP products
meet two express claim limitations of the Asserted Claims.
AngioDynamics also contends that the record fails to show