United States District Court, D. Delaware
ZIMMER SURGICAL, INC. and DORNOCH MEDICAL SYSTEMS, INC., Plaintiffs;
STRYKER CORPORATION and STRYKER SALES CORPORATION, Defendants and Counterclaim Plaintiffs;
ZIMMER, INC., ZIMMER SURGICAL, INC., DORNOCH MEDICAL SYSTEMS, INC., and ZIMMER U.S., INC., Counterclaim Defendants.
Frederick L. Cottrell, III and Christine D. Haynes, RICHARDS,
LAYTON & FINGER LLP, Wilmington, DE; J. Michael Jakes
(argued), Kathleen A. Daley (argued), Susan Y. Tull, Benjamin
A. Saidman, and Scott A. Allen (argued), FINNEGAN, HENDERSON,
FARABOW, GARRETT & DUNNER, LLP, Washington, DC, attorneys
for Plaintiffs and Counterclaim Defendants.
Shea Gaza and Samantha G. Wilson, YOUNG CONAWAY STARGATT
& TAYLOR, LLP, Wilmington, DE; Robert A. Surrette
(argued), Sandra A. Frantzen (argued), Deborah A. Laughton,
Ryan Pianetto, and Bryce Persichetti, MCANDREWS, HELD &
MALLOY, LTD, Chicago, IL, attorneys for Defendants and
ANDREWS, U.S. DISTRICT JUDGE.
pending before the Court are the parties' motions for
summary judgment (D.I. 309, 310, 311, 312, 313, 316, 356,
411) and Daubert motions to exclude expert testimony
and opinions. (D.I. 317, 321, 322, 327). The parties have
fully briefed the issues (D.I. 314, 318, 320, 323, 324, 328,
351, 353, 355, 359, 360, 361, 386, 387, 389, 391, 392, 393,
411, 413, 415). The Court heard helpful oral argument on
January 22, 2019. (D.I. 417).
August 8, 2016, Zimmer Surgical, Inc. and Dornoch Medical
Systems, Inc. (collectively, "Zimmer") filed suit
against Stryker Corporation and Stryker Sales Corporation
(collectively, "Stryker") for infringement of U.S.
Patent No. RE 44, 920 ("the '920 patent").
(D.I. 1). On May 22, 2018, Stryker filed counterclaims
against Zimmer Surgical, Inc., Dornoch Medical Systems, Inc.,
Zimmer Inc., and Zimmer U.S. Inc. (also collectively,
"Zimmer") for infringement of U.S. Patent No. 9,
579, 428 ("the '428 patent") which was applied
for and issued during the pendency of this suit. (D.I. 251).
'920 patent is a reissue of U.S. Patent No. 7, 892, 420
("the '420 patent"). It issued on June 3, 2014
and is directed to a fluid waste management system combining
a movable waste fluid collection cart with a waste fluid
disposal unit. The '920 patent claims priority to U.S.
Patent No. 6, 893, 425 ("the '425 patent"). The
'420 patent was filed as a continuation-in-part of the
application for U.S. Patent No. 7, 258, 711 ("the
'711 patent"). The '711 patent was filed as a
divisional of application no. 10/090, 221 on March 4, 2002,
which issued as U.S Patent No. 6, 893, 425 ("the
'425 patent"). The application for the '425
patent was published as Publication No. U.S. 2003/0164600
("the '600 publication").
2013, Domoch sought to reissue the '420 patent and add
new claims 15-41. These reissue claims are directed to a
"system for handling waste fluid" that has two
containers, each "being configured to collect liquid
waste from the patient." ('920 patent, els. 15, 29).
Zimmer asserts only new reissue claims against Stryker.
Zimmer alleges that Stryker's Neptune 2 and Neptune 3
waste collection systems infringe the '920 patent.
'428 patent issued on February 28, 2017 during the
pendency of this litigation. The '428 patent is directed
to a waste collection system with a removable intake manifold
that prevents the release of uncollected waste still in the
manifold. ('428 patent col. 1:31-37). Stryker accuses
Domoch's Transposal® UltrafleX Fluid Waste Management
System ("the Ultraflex system") and IntelliCart
system of infringing claims 1-6, 10, 14-16, 20, 23-25, 28 and
29 of the '428 patent. (D.I. 359 at vii).
parties now move for summary judgment on a multitude of
issues (D.I. 309, 310, 311, 312, 313, 316, 356) and for
exclusion of certain expert testimony and opinion (D.I. 317,
321, 322, 327).
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 has the initial burden
of proving the absence of a genuinely disputed material fact
relative to the claims in question. Celotex Corp. v.
Catrett, 477 U.S. 317, 330 (1986). Material facts are
those "that could affect the outcome" of the
proceeding, and "a dispute about a material fact is
'genuine' if the evidence is sufficient to permit a
reasonable jury to return a verdict for the nonmoving
party." Lamont v. New Jersey, 637 F.3d 177, 181
(3d Cir. 2011) (quoting Anderson v. Liberty Lobby, Inc.,
Ml U.S. 242, 248 (1986)). The burden on the moving party
may be discharged by pointing out to the district court that
there is an absence of evidence supporting the non-moving
party's case. Celotex, 477 U.S. at 323.
burden then shifts to the non-movant to demonstrate the
existence of a genuine issue for trial. Matsushita Elec.
Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586-87
(1986); Williams v. Borough of West Chester, Pa.,
891 F.2d 458, 460-61 (3d Cir. 1989). A non-moving party
asserting that a fact is genuinely disputed must support such
an assertion by: "(A) citing to particular parts of
materials in the record, including depositions, documents,
electronically stored information, affidavits or
declarations, stipulations .. ., admissions, interrogatory
answers, or other materials; or (B) showing that the
materials cited [by the opposing party] do not establish the
absence ... of a genuine dispute ...." Fed.R.Civ.P.
determining whether a genuine issue of material fact exists,
the court must view the evidence in the light most favorable
to the non-moving party and draw all reasonable inferences in
that party's favor. Scott v. Harris, 550 U.S.
372, 380 (2007); Wishkin v. Potter, 476 F.3d 180,
184 (3d Cir. 2007). A dispute is "genuine" only if
the evidence is such that a reasonable jury could return a
verdict for the non-moving party. Anderson, Ml U.S.
at 247-49. If the non-moving party fails to make a sufficient
showing on an essential element of its case with respect to
which it has the burden of proof, the moving party is
entitled to judgment as a matter of law. See Celotex
Corp., Ml U.S. at 322.
Rule of Evidence 702 sets out the requirements for expert
witness testimony and states:
A witness who is qualified as an expert by knowledge, skill,
experience, training, or education may testify in the form of
an opinion or otherwise if: (a) the expert's scientific,
technical, or other specialized knowledge will help the trier
of fact to understand the evidence or to determine a fact in
issue; (b) the testimony is based on sufficient facts or
data; (c) the testimony is the product of reliable principles
and methods; and (d) the expert has reliably applied the
principles and methods to the facts of the case.
Fed. R. Evid. 702. The Third Circuit has explained:
Rule 702 embodies a trilogy of restrictions on expert
testimony: qualification, reliability and fit. Qualification
refers to the requirement that the witness possess
specialized expertise. We have interpreted this requirement
liberally, holding that a broad range of knowledge, skills,
and training qualify an expert. Secondly, the testimony must
be reliable; it must be based on the "methods and
procedures of science" rather than on "subjective
belief or unsupported speculation"; the expert must have
"good grounds" for his or her belief. In sum,
Daubert holds that an inquiry into the reliability
of scientific evidence under Rule 702 requires a
determination as to its scientific validity. Finally, Rule
702 requires that the expert testimony must fit the issues in
the case. In other words, the expert's testimony must be
relevant for the purposes of the case and must assist the
trier of fact. The Supreme Court explained in
Daubert that Rule 702's "helpfulness"
standard requires a valid scientific connection to the
pertinent inquiry as a precondition to admissibility.
By means of a so-called "Daubert hearing,"
the district court acts as a gatekeeper, preventing opinion
testimony that does not meet the requirements of
qualification, reliability and fit from reaching the jury.
See Daubert ("Faced with a proffer of expert
scientific testimony, then, the trial judge must determine at
the outset, pursuant to Rule 104(a) of the Federal Rules of
Evidence whether the expert is proposing to testify to (1)
scientific knowledge that (2) will assist the trier of fact
to understand or determine a fact in issue.").
Schneider ex rel. Estate of Schneider v. Fried, 320
F.3d 396, 404-05 (3d Cir. 2003) (cleaned up).
The '920 Patent is Entitled to a Priority Date of March
moves for summary judgment that the '920 patent is
entitled to a priority date of March 4, 2002. (D.I. 314 at
12). Stryker moved for summary judgment of invalidity because
it argues that the '920 claims are not entitled to a
priority date earlier than 2006 or, alternatively, August
2004. (D.I. 320 at 5, 7). The parties agree that entitlement
to priority is a question of law to be determined at summary
judgment and that no material disputes of fact exist. (D.I.
417 at 6:11-13, 12:3-7; D.I. 314 at 13 (citing case law)).
Stryker asserts that Zimmer is not entitled to a March 4,
2002 priority date for two reasons: (1) the priority chain
was broken when the application for the '420 patent (of
which the '920 patent is a reissue) did not reference the
original '425 patent application, and (2) the disclosure
of the original application does not provide the required
§ 112 written description support for the asserted
claims. (D.I. 320 at 5, 7; D.I. 359 at 8, 10). Zimmer argues
that the '420 patent does not break the priority chain
and that Stryker has failed to identify a single claim
limitation in the asserted claims that lacks support in the
original disclosure. (D.I. 314 at 13; D.I. 351 at 2, 5). I
agree with Zimmer.
patent applicants seek a patent on an invention previously
disclosed consistent with 35 U.S.C. § 112(a), the
applicant is entitled to claim the priority date of the
earlier-filed application. 35 U.S.C. § 120. Patent
applicants seeking to claim the benefit of an earlier
priority date are required to include with the application a
"specific reference to the earlier filed
application." Id. The '"specific
reference' requirement mandates each [intermediate]
application in the chain of priority to refer to the prior
applications." Medtronic CoreValve LLC v. Edwards
Lifesciences Corp., 741 F.3d 1359, 1363 (Fed. Cir. 2014)
(internal citations omitted). After a patent issues, a
patentee may request a certificate of correction to correct
"a mistake of clerical or typographical nature, or of
minor character." 35 U.S.C. § 255. Claims in
continuation-in-part applications may receive different
priority dates. Waldemar Link v. Osteonics Corp., 32
F.3d 556, 558 (Fed. Cir. 1994).
the '420 patent application's failure to reference
the original '425 patent does not break the priority
chain of the '920 patent. Priority claims may be
corrected by filing a reissue application under 35 U.S.C.
§ 251. See Lucent Techs. Inc. v. Gateway, Inc.,
470 F.Supp.2d 1163, 1173 (S.D. Cal. 2007) (finding change in
priority claim not broadening reissue); see also Fontjin
v. Okamoto, 518 F.2d 610, 621 (Cust. & Pat. App.
1975) ("[A] reissue application filed for the sole
purpose of perfecting a claim to priority does not broaden
the scope of the claims of the original patent and is not in
contravention of the requirements of section 251 even though
filed more than two years after the patent grant.")
(holding acknowledged in Medrad, Inc. v. Tyco Healthcare
Grp. LP, 466 F.3d 1047, 1051 (Fed. Cir. 2006)). As
priority chains can be corrected through reissue, it is
illogical to determine that the application for the
now-surrendered patent breaks the priority chain. Such a
determination would defeat the legally recognized use of a
reissue application to correct the priority chain in all
longstanding PTO practice "has allowed patentees to use
section 255 certificates of correction to correct section 120
priority chains since at least as early as 1976."
Word to Info, Inc. v. Google Inc., 140 F.Supp.3d
986, 995 (N.D. Cal. 2015) (collecting cases). "[I]nsofar
as the PTO is concerned, a section 255 certificate of
correction can be used to correct a section 120 chain of
priority defect even after patent issuance."
Id. Thus, Stryker's emphasis on the distinction
between patents and applications is misplaced. Stryker cites
cases concerning situations where the patentee did not
attempt to correct the priority chain, either through reissue
or a certificate of correction. See Nat. Alts. Int'l,
Inc. v. Iancu, 904 F.3d 1375 (Fed. Cir. 2018);
Medtronic, 741 F.3d 1359. These cases say little
about whether a certificate of correction to a reissue patent
is insufficient to correct the patent's priority chain.
Zimmer obtained a certificate of correction for its priority
claim in the reissued '920 patent. As priority claims may
be corrected through reissue, the failure of the '420
patent's application to make the "specific
references" required by § 120 cannot alone be
sufficient to break the '920 patent's priority chain.
Moreover, a certificate of correction is a legally acceptable
way to correct unintentional errors in a patent's
priority chain, even after the patent has been issued.
Word to Info, 140 F.Supp.3d at 993-94. Therefore, I
determine that the '920 patent has an unbroken priority
chain to the '425 patent application date, March 4, 2002.
Zimmer has shown that the disclosure of the original
application for the '425 patent provides the required
§ 112 written description support for the asserted
claims of the '920 patent. Claims in a
continuation-in-part application will be "entitled to
the benefit of an earlier filed application only if the
disclosure of the earlier application provides support for
the claims ... as required by 35 U.S.C. § 112."
PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d
1299, 1306 (Fed. Cir. 2008) (quoting In re Chu, 66
F.3d 292, 297 (Fed. Cir. 1995)); see also Augustine Med,
Inc. v. Gaymar Indus., Inc., 181 F.3d 1291, 1302-03
(Fed. Cir. 1999) ("Different claims of [a CIP]
application may therefore receive different effective filing
dates.. . . Subject matter that arises for the first time in
[a] CIP application does not receive the benefit of the
filing date of the parent application.")- The disclosure
of the prior application must "convey with reasonable
clarity to those skilled in the art that, as of the filing
date sought, [the inventor] was in possession of the
invention" as later claimed. Vas-Cath Inc. v.
Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991)
(emphasis in original).
points to the inclusion of a new embodiment in the
specification as evidence that the original disclosure would
not satisfy the written description requirement. (D.I. 320 at
5; D.I. 359 at 11). However, the test is not whether the
claims may also find support in new matter, but whether the
original disclosure is sufficient to support the claims.
PowerOasis, 522 F.3d at 1306. Here, I determine that
the original disclosure of the '425 patent provides
sufficient written description for the reissue claims.
sides agree that the '600 publication would anticipate
the '920 patent. (D.I. 314 at 17; D.I. 359 at 17).
Anticipation requires "each and every limitation [to be]
found either expressly or inherently in a single prior art
reference." King Pharms., Inc. v. Eon Labs.,
Inc., 616 F.3d 1267, 1274 (Fed. Cir. 2010). Stryker
asserts that there is a distinction between anticipation and
written description, whereby a reference may anticipate
without satisfying § 112. (D.I. 320 at 7). However,
Stryker has not demonstrated that support for the reissue
claims is lacking here. Stryker merely points to the
existence of new matter in the specification and argues that
the claims are therefore not supported under
PowerOasis. (D.I. 320 at 6). But PowerOasis
is not determinative here. There, the original application
did not provide a written description of "customer
interface" as set forth in the asserted claims.
PowerOasis, 522 F.3d at 1307-08. There, in the
continuation-in-part application, a new embodiment describing
a vending machine with a user interface located remotely from
the vending machine influenced the construction of the claim
term "customer interface" to encompass more than
the "user interface" located in the vending machine
in the original application. Id. at 1307-08. Here,
however, Stryker points to elements that could be added to
the cart on top of the claimed elements as evidence
that the previous disclosure does not support the claims.
These additional elements are claimed separately from the
asserted claims. (See, e.g., '920 patent, cl.
1). The original disclosure of the '425 patent supports
each claim element of the asserted reissue claims in the
'920 patent and the construction of those claim elements.
Nor is the identification of a new utility enough for written
description to fail where the claimed structure is the same.
In re Kirchner, 305 F.2d 897, 903-04 (C.C.P.A.
1962). Therefore, the asserted claims of the '920 patent
are entitled to priority date of March 4, 2002 and are not
invalid based on art after that date.
Stryker has Not Demonstrated an Absence of Genuine Dispute of
Fact as to Invalidity Under Section 112
moves for summary judgment of invalidity for lack of written
description because the Asserted Claims (1) "do not
recite any mechanism to regulate or control vacuum in the
system required for the system to operate" and (2) use
improper functional language. (D.I. 320 at 14-15). Zimmer
argues that Stryker seeks to impose a rejected
"essential element" test upon patentees and that a
person of ordinary skill in the art would understand the
scope of the functional language "independently
adjustable" with reasonable certainty. (D.I. 351 at
written description requirement contained in 35 U.S.C. §
112, ¶ 1 requires that the specification "clearly
allow persons of ordinary skill in the art to recognize that
the inventor invented what is claimed." Ariad
Pharm., Inc., v. Eli Lilly & Co., 598 F.3d 1336,
1351 (Fed. Cir. 2010) (en banc) (cleaned up). "In other
words, the test for sufficiency is whether the disclosure of
the application relied upon reasonably conveys to those
skilled in the art that the inventor had possession of the
claimed subject matter as of the filing date."
Id. The written description inquiry is a question of
fact. See Id. Although it is a question of fact,
"[c]ompliance with the written description
requirement... is amenable to summary judgment in cases where
no reasonable fact finder could return a verdict for the
non-moving party." PowerOasis, 522 F.3d at
1307. "A party must prove invalidity for lack of written
description by clear and convincing evidence."
Vasudevan Software, Inc. v. MicroStrategy, Inc., 782
F.3d 671, 682 (Fed. Cir. 2015).
unique branch of § 112 case law provides that where the
specification clearly limits the scope of the inventions in
ways that the claims do not, the patent is invalid for lack
of written description. ICU Med, Inc. v. Alaris Med.
Sys., Inc., 558 F.3d 1368, 1378 (Fed. Cir. 2009)
("specification describes only medical valves with
spikes" and the claims did not include a spike
limitation); Gentry Gallery, Inc. v. Berkline Corp.,
134 F.3d 1473, 1479 (Fed. Cir. 1998) ("original
disclosure clearly identifies the console as the only
possible location of the control" but claims did not
limit the location of the controls). Stryker argues that the
asserted claims of the '920 patent are invalid for lack
of written description under this line of cases.
Stryker argues that "every single embodiment of the
[fluid collection] cart in the ['920 patent] includes a
vacuum control system (in the form of a valve control system
and regulator) to regulate vacuum in the cart." (D.I.
320 at 14). However, the '920 specification only recites
a single embodiment of the fluid collection cart. ('920
patent, col. 4:56-6:36). This is unlike both ICU
Medical and Gentry Gallery where the
specification repeatedly made clear that the spikes in
ICU Medical and the console location in Gentry
Gallery were critical to the inventor's contribution
and therefore to the scope of the claims. Gentry
Gallery, 134 F.3d at 1479; ICU Med, 558 F.3d at
1378. Here, the independent claims recite "at least one
of the suction ports being configured to provide at least two
different levels of suction" and "a level of
suction at one of the suction ports being independently
adjustable of a level of suction at another of the suction
ports." ('920 patent, els. 15, 29). The
specification provides an example of how to achieve these
claims—by using a valve control system and regulator.
('920 patent col. 5:44-49). "It is well established
that 'it is not necessary to claim in a patent every
device required to enable the invention to be
used.'" Asyst Techs., Inc. v. Empak, Inc.,
268 F.3d 1364, 1371 (Fed. Cir. 2001) (quoting Hughes
Aircraft Co. v. United States, 640 F.2d 1193, 1197 (Ct.
Cl. 1980)). Unlike the spikeless claims in ICU
Medical and the console location in Gentry
Gallery, here, the exclusion of the valve control system
and regulator from the independent claims neither changes how
the system functions nor broadens the scope of the invention.
Therefore, I determine that Stryker has not demonstrated that
a reasonable jury could not determine that claims 15 and 29
of the '920 patent have sufficient § 112 support.
raises a second § 112 issue: whether claim 29 of the
'920 patent is invalid for indefiniteness as a result of
improper functional claiming. (D.I. 320 at 15). Specifically,
Stryker contends that the level of suction being
"independently adjustable" in claim 29 is improper
functional claiming under Halliburton Energy Servs., Inc.
v. M-I LLC, 514 F.3d 1244, 1255-56 (Fed. Cir. 2008).
Zimmer asserts that claim 29 is not indefinite because
'"independently adjustable' is not a relative
term of degree, but instead an absolute statement about the
vacuum, which one of ordinary skill would understand with
reasonable certainty." (D.I. 351 at 11).
Federal Circuit has stated that when determining whether
functional language is indefinite "[w]hat is needed is a
context-specific inquiry into whether particular functional
language actually provides the required reasonable
certainty." BASF Corp. v. Johnson Matthey Inc.,
875 G.3d 1360, 1366 (Fed. Cir. 2017). "[C]ase law is
clear that an applicant is not required to describe in the
specification every conceivable and possible future
embodiment of his invention." Rexnord Corp. v.
Laitram Corp., 274 F.3d 1336, 1344 (Fed. Cir. 2001).
"[A] vice of functional claiming occurs 'when the
inventor is painstaking when he recites what has already been
seen, and then uses conveniently functional language at the
exact point of novelty.'" Halliburton, 514
F.3d at 1255 (quoting Gen. Elec. Co. v. Wabash Appliance
Corp., 304 U.S. 364, 371(1938)).
the claim language "independently adjustable" would
inform a person of ordinary skill in the art of the claim
scope with reasonable certainty as it is not a relative term
of degree, but rather a binary proposition. The suction level
at one suction port must be able to be adjusted independent
of another. This is not the unclear functional language
of Halliburton. See 514 F.3d at 1253 (specification
did not note the "degree of fragility of its
invention"); see also Medicines Co. v. Mylan,
Inc., 853 F.3d 1296, 1307 (Fed. Cir. 2017) (claim
recited "efficient" mixing but specification did
not define "efficient"). Therefore, I determine
that Stryker had not met its burden on summary judgment to
show that claim 29 is indefinite because of improper
The '920 Patent is not Invalid for Obviousness-Type
has moved for summary judgment that the asserted claims are
not invalid over the claims of related U.S. Patent No. 7,
090, 663 ("the '663 patent") as a matter of
law. (D.I. 314 at 18). Stryker cross-moves that the asserted
claims are invalid for obviousness-type double patenting.
(D.I. 359 at 17). As the parties were briefing summary
judgment motions, Zimmer filed a terminal disclaimer of the
'920 patent term. (D.I. 387 at 5; D.I. 388-1, Ex. 27).
Stryker requested and received permission to file a
supplemental motion for summary judgment of limitation of
damages to post-disclaimer infringement. (D.I. 396; D.I.
patent may be invalid for obviousness-type double patenting
where two patents are commonly owned and the later-expiring
patent would have been obvious in light of the
earlier-expiring patent. See AbbVie Inc. v.
Mathilda, 764 F.3d 1366, 1373-74 (Fed. Cir. 2014).
Zimmer asserted in its opening brief, without conceding
obviousness, that the '920 patent and the '663 patent
have the same expiration date because the patents both claim
priority to the same date and have received no patent term
extensions or adjustments. (D.I. 314 at 18-19, 18 n.5).
Therefore, Zimmer asserts the '920 patent is not invalid
for obviousness-type double patenting. (Id.).
Stryker argues that the '920 patent is obvious in light
of the related '663 patent, and that the '663 patent
expires roughly two years earlier than the '920 patent
because the '920 patent was reissued for the same patent
term as the now-surrendered '420 patent. (Id.).
'920 patent is not invalid for obviousness-type double
patenting. Stryker's arguments regarding § 251 and
reissue patent terms reflect a hypertechnical reading of the
statute and ignore the general statutory limitation that a
patent term may only be granted for a term of twenty years
from the application's filing or priority
date. 35 U.S.C. § 154(a)(2). After the
'920 patent issued, Zimmer obtained a certificate of
correction correcting the priority date. (D.I. 315-1 at 336).
Accepting Stryker's argument would result in the '920
patent receiving a twenty-two year patent term, instead of
the mandated twenty. Moreover, Stryker's application of
the law would eliminate the ability of parties to correct a
priority claim through reissue proceedings.As the '663
patent and the '920 patent claim the same priority date
and have no patent term extension, I determine that the
patent term for both patents expires on the same day.
Therefore, obviousness-type double patenting does not apply
as a matter of law.
'920 patent was not invalid for obviousness-type double
patenting before Zimmer filed a disclaimer, the disclaimer
does not prevent Zimmer from seeking damages before December
12, 2018. I am unconvinced that Rembrandt Wireless
Techs., LP v. Samsung Elecs. Co., 853 F.3d 1370 (Fed.
Cir. 2017), clearly decides this issue. Rembrandt
addressed the issue of parties using disclaimer to circumvent
the marking requirement under 35 U.S.C. § 287.
Specifically, the Federal Circuit held that disclaimer cannot
retroactively circumvent a third party's rights and the
patentee's past obligation to mark. It did not
clearly determine that disclaimer could never be
given retroactive effect. There is a distinction between an
attempt to evade a past obligation through retroactive
disclaimer versus using a terminal disclaimer to avoid
invalidity by disclaiming future patent rights. The policy
behind the doctrine of obviousness-type double patenting is
to prevent parties from extending the term of their patent
beyond the statutory term. Yet, the Federal Circuit has
previously endorsed the use of terminal disclaimers to
override invalidity during litigation. See Boehringer
Ingelheim Intern. GmbH v. Barr Labs., Inc., 592 F.3d
1340, 1347 (Fed. Cir. 2010) ("[A] patentee may file a
disclaimer after issuance of the challenged patent or during
litigation, even after a finding that the challenged patent
is invalid for obviousness-type double patenting.");
Perricone v. Medicis Pharm. Corp., 432 F.3d 1368,
1375 (Fed. Cir. 2005) ("[a] terminal disclaimer can
indeed supplant a finding of invalidity for double
patenting"). Boehringer suggests that terminal
disclaimer only creates issue of retroactivity when it is
pursued after the earlier patent expires. 592 F.3d at 1347.
In other words, harm to others from obviousness-type double
patenting only occurs after the earlier patent expires. I
determine that Zimmer's disclaimer, therefore, does not
limit Zimmer's past damages.
The '920 Patent is not Invalid for Reissue
moves for summary judgment that the '920 patent claims do
not violate the rule against recapture. Stryker cross-moves
that the claims are invalid for improper recapture. Reissue
proceedings "cannot be used to obtain subject matter
that could not have been included in the original
patent." Medtronic, Inc. v. Guidant Corp., 465
F.3d 1360, 1372 (Fed. Cir. 2006). "Under the
'recapture' rule, the deliberate surrender of a claim
to certain subject matter during the original prosecution of
the application for a patent 'made in an effort to
overcome a prior art rejection' is not such
'error' as will allow the patentee to recapture that
subject matter in a reissue." Id. at 1372-73.
parties agree the recapture rule requires a three-step
analysis. The Court must first determine "whether, and
in what respect, the reissue claims are broader" than
the original patent claims. Id. at 1373. Second, the
court must determine whether the "broader aspects of the
reissue claims relate to subject matter surrendered in the
original prosecution." Id. The surrender at
this second step must be deliberate. Id. at 1372-73.
Absent "evidence that an amendment or cancellation was
'an admission that the scope of that claim was not in
fact patentable, '" surrender is not deliberate.
Medtronic Inc. v. Guidant Corp., 378 F.Supp.2d 503,
518 (D. Del. 2005), aff'd 465 F.3d 1360 (Fed Cir. 2006)
(internal citations omitted). Third, if surrender is
deliberate, the court then determines "whether the
reissue claims were materially narrowed in other
respects" to avoid the recapture rule.
Medtronic, 465 F.3d at 1373.
has asserted a defense that the asserted '920 claims
violate the recapture rule in light of an amendment made
during the prosecution of the '663 patent. The '663
patent is a divisional of the '425 patent and also claims
priority to the '425 patent. (D.I. 315-1 at 370).
Stryker's asserted defense is based upon dependent claim
6 of the '663 patent, which depends from claim 5, which
depends from claim 1. (D.I. 359 at 20). During prosecution,
the Examiner rejected claims 1, 2, 4, and 5 as obvious. (D.I.
362-1 at 321-27). The Examiner did not reject claims 6-8,
instead stating, "Claims 6-8 are objected to as being
dependent on a rejected base claim, but would be allowable if
rewritten in independent form including all of the
limitations of the base claim and any intervening
claims." (Id. at 327). Zimmer did not rewrite
claim 6 as an independent claim but amended claim 1 to
overcome the obviousness objection. (Id. at 332-34).
Stryker cites this amendment as the basis for its recapture
argues that Stryker's recapture defense fails as a matter
of law because Stryker cannot demonstrate the deliberate
surrender of subject matter in claim 6 to overcome a prior
art rejection. Specifically, Zimmer argues that claim 6 was
never rejected under the prior art, and the amendment to
claim 1 cannot be the "deliberate surrender" of
claim 6 subject matter under the recapture rule. I agree with
Zimmer. The first step of the recapture analysis asks whether
and in what aspect the reissued claims of the '920 patent
are broader than those of the '663 patent. Stryker
asserts the reissued claims are broader than the '663
patent. Zimmer states that I need not address this point
because step two of the analysis is determinative. I agree.
second step of the recapture analysis asks whether there was
any deliberate surrender of a claim to certain subject matter
to overcome a prior art rejection. I determine there was not.
The Examiner specifically provided that claim 6 was allowable
if rewritten in independent form. The fact that Zimmer
amended claim 1 to overcome a separate prior art rejection
does not equate to a deliberate surrender of the subject
matter deemed allowable under claim 6. There must be evidence
that an amendment or cancellation was an admission that the
scope of that claim was not in fact patentable for surrender
to be deliberate. Medtronic, 378 F.Supp.2d at 518.
Here, the evidence does not indicate that the amendment of
independent claim 1 was an admission that the scope of claim
6 was not in fact patentable. Because I have determined that
there was no deliberate surrender under step two of the
recapture analysis, I need not continue to step three. The
asserted claims of the '920 patent are not invalid for
Stryker Has Not Demonstrated an Absence of Genuine Dispute of
Fact as to Whether the Terry Reference Invalidates the
asserts that the '920 patent is invalid as anticipated by
or obvious in light of the Terry patent as a matter of law,
even with a 2002 priority date. (D.I. 320 at 9). Zimmer asserts
that factual issues preclude summary judgment. (D.I. 351 at
6). A patent claim is anticipated "if each and every
limitation is found either expressly or inherently in a
single prior art reference." King Pharms., Inc. v.
Eon Labs., Inc., 616 F.3d 1267, 1274 (Fed. Cir. 2010).
Patents are presumed valid and invalidity must be proven by
clear and convincing evidence. Microsoft Corp. v. i4i
Ltd. P 'ship, 564 U.S. 91 (2011).
Stryker has not shown an absence of disputes of fact as to
whether the Terry Reference anticipates claims 15, 17, 18,
20, 21, 27, 29, 30, 32, 33, 35, and 36. There is a dispute
over two claim elements: (1) "at least one of the
suction ports being configured to provide at least two
different levels of suction" and (2) "a level of
suction at one of the suction ports being independently
adjustable of a level of suction at another of the suction
ports." (Ex. 504 at 30). Zimmer asserts that the claims
of the '920 patent "require active suction control
and independent adjustment when a vacuum is applied and that
Terry discloses no such thing." (D.I. 351 at 7). Stryker
asserts that the Terry reference "satisfies these
limitations via 'control levers 44' that separately
control the vacuum level at each of two suction ports on the
cart." (D.I. 320 at 10.) "Disputed material issues
of fact concerning how one of ordinary skill in the art would
understand disclosure of a particular technology mandates
denial of summary judgment of anticipation."
Robocast, Inc. v. Apple, Inc., 39 F.Supp.3d 552, 564
(D. Del. 2014) (citing Osram Sylvania v. Am. Induction
Techs., 701 F.3d 698, 706 (Fed. Cir. 2012). This is such
a case. Moreover, there are factual disputes regarding
whether the Terry reference discloses every limitation of
independent claims 15 and 29. (D.I. 351 at 70). Stryker's
motion for summary judgment of invalidity of claims 15, 17,
18, 20, 21, 27, 29, 30, 32, 33, 35, and 36 is therefore
Stryker has not demonstrated an absence of genuine factual
disputes as to whether the Terry Reference anticipates claims
19, 28 and 34 or otherwise renders them obvious as a matter
of law. Nor has Stryker shown an absence of dispute of fact
as to whether the Terry Reference renders claims 24 and 39
obvious. These claims are dependent claims and depend from
claims 15 and 29. "As a dependent claim contains at
least one more limitation than the independent claim upon
which it depends, it cannot be invalid under § 102 ...
if the independent claim upon which it depends is not
anticipated." CA, Inc. v. Simple.com, Inc., 780
F.Supp.2d 196, 260 (E.D.N.Y. 2009); see also Duhn Oil
Tool, Inc. v. Cooper Cameron Corp., 2012 WL 604138 (E.D.
Cal. Feb. 23, 2012). As there are genuine disputes of fact as
to whether claims 15 and 29 are anticipated, there are also
genuine disputes of fact as to the dependent claims.
if an independent claim is nonobvious, then the dependent
claim is also nonobvious. In re Fine, 837 F.2d 1071,
1076 (Fed. Cir. 1988) ("A claim that depends from a
non-obvious independent claim is non-obvious because it
contains all the limitations of the independent claim, plus a
further limitation.")- Thus, I do not need to consider
"arguments that certain dependent claim limitations
would have been obvious where the base claim has not been
proven invalid." SynQor, Inc. v. Artesyn Techs.,
Inc., 709 F.3d 1365, 1375 (Fed. Cir. 2013). As there are
genuine disputes of fact as to whether 15 and 29 are invalid
for obviousness, those disputes also exist for the dependent
claims. Thus, Stryker has not met its burden.
The '920 Patent is not Invalid for Violating Original
U.S.C. § 251 provides, "Whenever any patent is,
through error, deemed wholly or partly inoperative or invalid
... by reason of a patentee claiming more or less than he had
a right to claim," the PTO may "reissue the patent
for the invention disclosed in the original patent." The
Federal Circuit has stated that "the essential inquiry
under the 'original patent' clause of § 251 ...
is whether one skilled in the art, reading the specification,
would identify the subject matter of the new claims as
invented and disclosed by the patentees." Hester
Indus., Inc. v. Stein, Inc., 142 F.3d 1472, 1484 (Fed.
Cir. 1998) (quoting In re Amos, 953 F.2d 613, 618
(Fed. Cir. 1991)). The Federal Circuit has explained that the
inquiry "is analogous to the written description
requirement under § 112, ¶ 1," Revolution
Eyewear, Inc. v. Aspex Eyewear, Inc., 563 F.3d 1358,
1367 (Fed. Cir. 2009), but that "the specification must
clearly and unequivocally disclose the newly claimed
invention as a separate invention." Antares Pharma
v. Medac Pharma, 771 F.3d 1354, 1362 (Fed. Cir. 2014).
"Whether the claims of a reissue patent violate 35
U.S.C. § 251, and thus are invalid, is a question of
law. . . ." N. Am. Container v. Plastipak
Packaging, 415 F.3d 1335, 1349 (Fed. Cir. 2005).
moves for summary judgment that the asserted reissue claims
violate the original patent requirement. (D.I. 320 at 16-17).
Specifically, Stryker, relying on Antares, asserts
that the '920 patent "does not explicitly describe a
collection cart and disposal unit without the
features of the '420 patent." (Id. at 17).
Zimmer argues that Stryker overextends Antares
because the court there relied on the failure of the
specification to disclose "the ...