QXMédical, LLC v. Vascular Solutions, LLC

• Decision Date: 02 October 2019
• Docket Number: Case No. 17-CV-1969 (PJS/TNL)
• Citation: 408 F.Supp.3d 996
• Parties: QXMÉDICAL, LLC, Plaintiff, v. VASCULAR SOLUTIONS, LLC ; Teleflex Innovations S.à.r.l. ; and Arrow International, Inc., Defendants.
• Court: U.S. District Court — District of Minnesota

408 F.Supp.3d 996

QXMÉDICAL, LLC, Plaintiff,

v.VASCULAR SOLUTIONS, LLC ; Teleflex Innovations S.à.r.l. ; and Arrow International, Inc., Defendants.

Case No. 17-CV-1969 (PJS/TNL)

United States District Court, D. Minnesota.

Signed October 2, 2019

Courtland C. Merrill and Philip J. Kaplan, ANTHONY OSTLUND BAER & LOUWAGIE P.A., for plaintiff.

J. Thomas Vitt, Emily Justine Tait, Patrick J. O'Rear, and Sanjiv Prakash Laud, JONES DAY; Kenneth E. Levitt, DORSEY & WHITNEY, for defendants.

ORDER

Patrick J. Schiltz, United States District Judge

This lawsuit involves six patents— U.S. PatentNos. 8,048,032(the "'032 patent"), 8,142,413 (the "'413 patent"), RE45,380 (the "RE'380 patent"), RE45,760 (the "RE'760 patent"), RE45,776 (the "RE'776 patent"), and RE46,116 (the "RE'116 patent").All six patents descend from a common patent application and share a common specification and common drawings.The patents are owned by defendant Teleflex Innovations S.à.r.l., whose parent corporation acquired defendantVascular Solutions, LLC, in February 2017.A third defendant, Arrow International, Inc., has the right to sell products practicing the patents.For convenience, the Court will refer to the defendants collectively as "Vascular Solutions."

In April 2017, Vascular Solutions accused plaintiffQXMédical, LLC of patent infringement.In response, QXMédical brought this action, seeking a declaration that its Boosting Catheter does not infringe any of Vascular Solutions's patents and that Vascular Solutions's patents are invalid.Vascular Solutions counterclaimed, seeking judgment against QXMédical for infringement.

On October 30, 2018, the Court issued an order construing certain terms of the patents in suit pursuant to Markman v. Westview Instruments, Inc. , 517 U.S. 370, 390-91, 116 S.Ct. 1384, 134 L.Ed.2d 577(1996).SeeQXMédical, LLC v. Vascular Solutions , No. 17-CV-1969(PJS/TNL), 2018 WL 5617568, at *1(D. Minn.Oct. 30, 2018).After the close of discovery, the parties filed cross-motions for summary judgment.For the reasons that follow, the Court mostly grants Vascular Solutions's motion, and mostly denies QXMédical's motion.

I.BACKGROUND

The Court will assume familiarity with its Markman order.Very briefly, the patents in suit relate to a medical device known as a "guide extension catheter."A guide extension catheter is used by a heart surgeon to deliver a balloon or stent into a coronary artery that has been narrowed by a buildup of plaque.The surgeon pushes the guide extension catheter though a larger catheter (known as the "guide catheter"), and then pushes the balloon or stent through the guide extension catheter and into the coronary artery.

The GuideLiner catheter that Vascular Solutions manufactures is depicted in the following diagram:

ECF No. 125-22at 32.¹The GuideLiner catheter manufactured by Vascular Solutions—as well as the Boosting Catheter manufactured by QXMédical—are composed of three main parts: (1) a pushrod, (2) a side opening, and (3) a flexible tip.In this diagram, the pushrod is on the left, the side opening is in the middle (within the blue section), and the flexible tip is on the right (in yellow).

II.DISCUSSION

A.Standard of Review

Summary judgment is warranted "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).A dispute over a fact is "material" only if its resolution might affect the outcome of the suit under the governing substantive law.Anderson v. Liberty Lobby, Inc. , 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202(1986).A dispute over a fact is "genuine" only if "the evidence is such that a reasonable jury could return a verdict for the nonmoving party."Id.When considering a summary-judgment motion, the Court"must view the evidence and the inferences that may be reasonably drawn from the evidence in the light most favorable to the non-moving party."Winthrop Res. Corp. v. Eaton Hydraulics, Inc. , 361 F.3d 465, 468(8th Cir.2004).

B. Validity—Indefiniteness of "Substantially Rigid"

All of the claims asserted against QXMédical disclose a "substantially rigid" segment, which is informally referred to as the "pushrod."QXMédical argues that these claims are fatally indefinite because of the way that the Court defined "substantially rigid" in its Markman order.Both parties have moved for summary judgment on the issue.

"A claim is invalid for indefiniteness if its language, when read in light of the specification and the prosecution history, ‘fail[s] to inform, with reasonable certainty, those skilled in the art about the scope of the invention.’ "Biosig Instruments, Inc. v. Nautilus, Inc. , 783 F.3d 1374, 1377(Fed. Cir.2015)(citation omitted).Because a patent is presumed to be valid, an accused infringer must prove indefiniteness by clear and convincing evidence.SeeMicrosoft Corp. v. i4i Ltd. P'ship , 564 U.S. 91, 95, 131 S.Ct. 2238, 180 L.Ed.2d 131(2011).Summary judgment may be granted on the issue of indefiniteness when there is no genuine dispute as to any material fact.SeeAkzo Nobel Coatings, Inc. v. Dow Chem. Co. , 811 F.3d 1334, 1336(Fed. Cir.2016)(affirming a district court's grant of summary judgment that a patent is not invalid for indefiniteness).

In its Markman order, the Court adopted a functional definition of "substantially rigid," construing the term to mean "rigid enough to allow the device to be advanced within the guide catheter."QXMédical , 2018 WL 5617568, at *5.QXMédical does not actually argue that the term (as defined by the Court) is indefinite.In other words, QXMédical does not argue that a person of ordinarily skill in the art would have any difficulty determining whether a particular portion of a guide extension catheter is rigid enough to push a flexible tubular structure through a guide catheter.

Rather, QXMédical argues that the problem with the Court's definition is that a portion of a guide extension catheter could be both"substantially rigid"and"flexible."Specifically, QXMédical contends that the material that comprises the tip portion (which must be "flexible") might be "rigid enough to allow the device to be advanced within the guide catheter"(and thus also "substantially rigid").Likewise, the pushrod (which must be "substantially rigid") must be able to bend enough to navigate the vascular system of a human being (and thus must also be "flexible").Under the Court's definition, says QXMédical, a person of ordinary skill would be unable to distinguish the "substantially rigid" portion of the device from the "flexible" portion.

The problem with QXMédical's argument is that its premise is flawed: Nothing in any of the patents in suit says that "substantially rigid" and "flexible" are mutually exclusive.In other words, nothing in any of the patents says that a segment of the device cannot be both"substantially rigid"and"flexible."Instead, the claims that disclose a "flexible tip" portion simply require that the substantially-rigid pushrod be "more rigid" than the flexible tip.See, e.g. , '032 at 10:38-40(emphasis added).This is a comparative limitation—a limitation that would be superfluous if "substantially rigid" and "flexible" were mutually exclusive categories.SeeBicon, Inc. v. Straumann Co. , 441 F.3d 945, 950(Fed. Cir.2006)("[C]laims are interpreted with an eye toward giving effect to all terms in the claim.").

QXMédical's argument that "substantially rigid" and "flexible" are mutually exclusive is also belied by its own proposed constructions of those terms.During the Markman proceedings, QXMédical asked the Court to define "substantially rigid" as "largely, but not wholly unable to bend," and "flexible" as "capable of bending."ECF No. 56at 21.Obviously something that is "largely, but not wholly unable to bend"(and thus "substantially rigid" as QXMédical would define that term) is also"capable of bending"(and thus "flexible" as QXMédical would define that term).In other words, under QXMédical's own proposed definitions, anything that is "substantially rigid" would necessarily be "flexible" as well.

There is, at bottom, no evidence in the record supporting QXMédical's argument that a person of ordinary skill would be unable to distinguish between the "substantially rigid" pushrod and the "flexible" distal tip.The experts on both sides agree that a person of ordinary skill would have no trouble determining whether a pushrod is "rigid enough to allow the device to be advanced within the guide catheter."SeeECF No. 134-2at 4-5;ECF No. 137at 31-32.And the experts on both sides agree that a person of ordinary skill would have no difficulty determining whether a substantially rigid pushrod is "more rigid" than a flexible tip portion.ECF No. 134-2at 6;ECF No. 137at 31-33.²

Because there is no evidence—much less clear and convincing evidence—that the boundaries of the claims cannot be understood by a person of ordinary skill, the Court grants Vascular Solutions's motion for summary judgment on the issue of indefiniteness.

C. Validity—Recapture Rule

The '032 patent claims a pushrod "without a lumen."Three of the reissued patents—the RE '760, RE '776, and RE '116 patents—do not include this limitation, however, and thus those reissued patents claim pushrods that have lumens, as well as pushrods that do not.The parties dispute whether, by removing the "without a lumen" limitation from the reissued patents, Vascular Solutions violated the "recapture rule" and thereby rendered those patents invalid.

The recapture rule "prevents a patentee from regaining through reissue the subject matter that he surrendered in an effort to obtain allowance of the original claims."In re Clement , 131 F.3d 1464, 1468(Fed. Cir.1997)."To decide whether a patentee surrendered certain subject matter, [courts] must determine ‘whether an objective observer viewing the prosecution history would conclude that the purpose of...