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Zimmer Surgical, Inc. v. Stryker Corp.

United States District Court, D. Delaware

March 7, 2019

ZIMMER SURGICAL, INC. and DORNOCH MEDICAL SYSTEMS, INC., Plaintiffs;
v.
STRYKER CORPORATION and STRYKER SALES CORPORATION, Defendants and Counterclaim Plaintiffs;
v.
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.

          Anne 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 Counterclaim Plaintiffs.

          MEMORANDUM OPINION

          ANDREWS, U.S. DISTRICT JUDGE.

         Currently 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).

         I. BACKGROUND

         On 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).

         The '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").

         In 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[1] against Stryker. Zimmer alleges that Stryker's Neptune 2 and Neptune 3 waste collection systems infringe the '920 patent.

         The '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).

         The 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).

         II. LEGAL STANDARD

         A. Summary Judgment

         "The 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.

         The 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. 56(c)(1).

         When 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.

         B. Daubert

         Federal 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).[2]

         III. DISCUSSION

         A. SUMMARY JUDGMENT

         1. The '920 Patent is Entitled to a Priority Date of March 4, 2002

         Zimmer 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.

         Where 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).

         First, 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 cases.

         Furthermore, 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.

         Here, 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.

         Second, 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).

         Stryker 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.

         Both 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.

         2. Stryker has Not Demonstrated an Absence of Genuine Dispute of Fact as to Invalidity Under Section 112

         Stryker 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 9-10).

         The 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).

         A 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.

         Specifically, 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).[3] 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.

         Stryker 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).

         The 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)).

         Here, 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 functional claiming.

         3. The '920 Patent is not Invalid for Obviousness-Type Double Patenting

         Zimmer 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. 410).

         A 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.).

         The '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.[4] 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.[5]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.[6]

         As the '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.

         4. The '920 Patent is not Invalid for Reissue Recapture

         Zimmer 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.

         The 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.

         Stryker 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 defense.

         Zimmer 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.

         The 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 reissue recapture.

         5. Stryker Has Not Demonstrated an Absence of Genuine Dispute of Fact as to Whether the Terry Reference Invalidates the '920 Patent

         Stryker 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.[7] (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).

         First, 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 denied.

         Second, 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.

         Similarly, 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.

         6. The '920 Patent is not Invalid for Violating Original Patent Requirement

         35 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).

         Stryker 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 ...


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