Nobelpharma AB v. Implant Innovations, Inc.

• Decision Date: 19 June 1996
• Docket Number: No. 91 C 4632.,91 C 4632.
• Citation: 930 F. Supp. 1241
• Parties: NOBELPHARMA AB, Plaintiff, v. IMPLANT INNOVATIONS, INC., Defendant.
• Court: U.S. District Court — Northern District of Illinois

930 F. Supp. 1241

NOBELPHARMA AB, Plaintiff, v. IMPLANT INNOVATIONS, INC., Defendant.

No. 91 C 4632.

United States District Court, N.D. Illinois, Eastern Division.

June 19, 1996.

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Alan I. Becker, Daniel G. Litchfield, Douglas B. Harper, Burditt & Radzius, Chicago, IL, Jeffrey M. Olson, Lyon & Lyon, Los Angeles, CA, for Nobelpharma Ab.

Edward L. Foote, Peter Charles McCabe, III, Winston & Strawn, Chicago, IL, James Ray Wood, Steven J. Soucar, Wood, Phillips, VanSanten, Hoffman & Ertel, Chicago, IL, Stephen Gary Rudisill, Arnold, White & Durkee, Chicago, IL, Gomer Winston Walters, Lindenbaum, Coffman, Kurlander, Brisky & Hayes, Ltd., Chicago, IL, Philip G. Koenig, Jason M. Honeyman, Wolf, Greenfield & Sacks, P.C., Boston, MA, for Implant Innovations, Inc.

Russel M. Pelton, Jr., Oppenheimer, Wolff & Donelly, Chicago, IL, pro se.

MEMORANDUM OPINION

BRIAN BARNETT DUFF, District Judge.

On July 23, 1991, Nobelpharma Ab ("NP") sued Implant Innovations, Inc. ("3i"), alleging patent infringement, and 3i counterclaimed, alleging antitrust violations. Between March 14, 1994, and May 4, 1994, this Court held the trial, in which this Court granted 3i's motion for judgment as a matter of law on NP's patent claim, and the jury found for 3i on 3i's antitrust counterclaim. Between May 12, 1994, and January 27, 1995, this Court resolved the issue of inequitable conduct and entered final judgment. On February 16, 1995, NP moved for judgment as a matter of law or, in the alternative, for a new trial. For the reasons discussed below this Court denies NP's motion for judgment as a matter of law and denies its alternative motion for a new trial. This Court, as the parties, proceeds immediately to the analysis.

I. Analysis

A. Patent Claim

1. NP's Motion for a New Trial

a. Standard of Review

Fed.R.Civ.P. 50(a)(1) ("Rule 50(a)(1)") governs judgments as a matter of law, and it provides:

If during a trial by jury a party has been fully heard on an issue and there is no legally sufficient evidentiary basis for a reasonable jury to find for that party on that issue, the court may determine the issue against that party and may grant a motion for judgment as a matter of law against that party with respect to a claim or defense that cannot under the controlling law be maintained or defeated without a favorable finding on that issue.

"In granting judgement as a matter of law after presentation of the plaintiff's case, the plaintiff's facts must be accepted as established and all reasonable inferences from those facts must be drawn in the plaintiff's favor." Allied Colloids, Inc. v. Am. Cyanamid Co., 64 F.3d 1570, 1573 (Fed.Cir.1995); see Burroughs Wellcome Co. v. Barr Labs., Inc., 40 F.3d 1223, 1227 (Fed.Cir.1994), cert. denied, ___ U.S. ___, 116 S.Ct. 771, 133 L.Ed.2d 724 (1996); see generally, Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986).

b. Invalidity

1) Best Mode

NP argues that it is entitled to a new trial on its infringement claim because this Court "erred in granting 3i's motion for judgment as a matter of law on the issue of best mode ... at the close of Nobelpharma's case in chief." Pl.'s Mot. at 2. NP argues that we "granted 3i's motion because Dr. Branemark testified that the technique used to obtain a micropitted surface on a `Nobel product' was not described in the '891 patent specification." Id. Yet "there is no evidence in the record that this technique was known at the time the patent application was filed, nor is there any evidence of concealing a technique better than the one described in the patent application." Id. So "a reasonable inference can, and must, be drawn that Dr. Branemark's testimony concerning the technique used to form the micropitted surface on a `Nobel product' related to developments subsequent to the filing date of the patent application." Id. at 3.

3i responds that NP is not entitled to a new trial because Branemark "testified that the manufacturing details to produce the claimed micropitted surface were secret and not disclosed." Def.'s Resp. at 1. 3i argues that Branemark's testimony was "unequivocal and dispositive," and 3i cites some of that testimony from trial transcript pages 1621-33, which testimony this Court reproduces below.

The first set of passages, bracketed below, concern the patent, column 7, lines 31 and following, which address micropitting.

Q. How do you get the micropitted surface described in Plaintiff's Trial Exhibit 2 on the surface of the Nobel product?

A. Using a 1 special manufacturing procedure which requires very special circumstances. There was a delegation from Japan asking the same question, and I told them that you've got to 2 follow the recipe, which I unfortunately cannot disclose.

Tr. at 1629.

The second set of passages, bracketed below, concern the patent, column 4, lines 8 and following, which address micropitting.

Q. Is that method of making the micropitted surface disclosed ... in Plaintiff's Trial Exhibit 2?

. . . . .

A. Yes. Yes, that's part of it, and that is what the Japanese tried to follow, but 1 there were some minor details that were not included here and which proved to be quite important.

Q. So there are some 2 details in the manufacturing process that are not stated in this patent at this point and which are important to making the kind of micropitted surface the patent is intended to get, right?

A. I guess it might be like that, yes.

Tr. at 1629-30.

The third set of passages, bracketed below, concern the patent, column 4, lines 10 and following, which address micropitting.

Q. Can you obtain a micropitted surface simply by cutting a piece of titanium at a speed less than 20 meters per minute?

A. 1 If you are lucky.

Q. You may get that result and you may not, is that it?

A. Yes. That was a problem, you see.

Q. What factors can cause you to fail to get micropitting even though you were cutting the metal at less than 20 meters per minute?

A. In fact, 2 any of the small detailed recipes that I discussed before but did not specify.

Tr. at 1631-32.

The fourth passage purportedly concerns the standardized procedures for making the implants. Although 3i cites several pages of transcript, only two of the pages concern standardized procedures.

Q. Actually, my question went to the characteristics of the titanium metal.

A. Yes, yes. Well, I don't know. I guess it was intended to be included in the biologically flawless material, but I don't know. The requisite, of course, is that the bulk material should provide this final result of the surface.

Q. What year did the standardized procedure you just referred to come into being?

A. I don't remember the years now, but it's in the different reports and some of them are quite complicated when it comes to figures, but there was a development period from '65, introductory period from '65 to '71 — through '71, I think. So from '72 the clinical procedure with healing time, et cetera, was more standardized.

Q. So in what year did the standardized procedure come into being?

A. I guess it was in 1972.

Tr. at 1632-33.

Title 35 U.S.C. § 112 ("§ 112") governs the best mode requirement, and, in relevant part, it provides: "The specification ... shall set forth the best mode contemplated by the inventor of carrying out his invention." See Chemcast Corp. v. Arco Indus. Corp., 913 F.2d 923, 926 (Fed.Cir.1990). "The purpose of the best mode requirement is to `restrain inventors from applying for patents while at the same time concealing from the public preferred embodiments of the invention which they have in fact conceived.'" Transco Prod., Inc. v. Performance Contracting, Inc., 38 F.3d 551, 560 (Fed.Cir.1994), cert. denied, ___ U.S. ___, 115 S.Ct. 1102, 130 L.Ed.2d 1069 (1995), (quoting In re Gay, 309 F.2d 769, 772 (CCPA 1962)). "A holding of invalidity for failure to disclose best mode requires clear and convincing evidence that the inventor both knew of and concealed a better mode of carrying out the claimed invention than was set forth in the specification." Id. (citing Scripps Clinic & Research Foundation v. Genentech, Inc., 927 F.2d 1565, 1578 (Fed.Cir.1991)).

In Transco, the court followed the Chemcast court's description of the proper best mode analysis, which has two steps. "The first step, which is wholly subjective, involves determining whether the inventor knew of a mode of practicing the claimed invention that he considered to be better than any other at the time he filed his application." Id. at 560. "If the inventor contemplated such a preferred mode, the second step is to compare what he knew with what he disclosed to determine whether the disclosure is adequate to enable one skilled in the art to practice the best mode." Id. "The second step, which involves assessing the adequacy of the disclosure, is largely an objective inquiry that depends upon the scope of the claimed invention and the level of skill in the art." Id.

This Court finds NP's argument unpersuasive. The testimony reproduced above demonstrates that when Branemark filed his patent application, he contemplated a best mode of practicing his invention, but his disclosures were inadequate to enable one skilled in the art to practice that best mode. This Court notes, however, that its finding excludes the testimony purportedly concerning standardized procedures, which 3i misinterprets. In any event, as this Court stated at trial, Branemark "did say that the method of making the implant micropits was a secret not disclosed in the patent." Tr. at 2292. As this Court further stated, "Branemark said important details were not produced. The sentence is powerful, unequivocal, unambiguous, and devastating to the plaintiff's case." Tr. at 2295. This Court believed it then, and this Court believes it now. And in light of it, this Court did not err when it granted 3i's motion for judgment as a...