Am. Med. Sys. Inc. v. Biolitec Inc.

• Decision Date: 30 March 2011
• Docket Number: Civil Action No. 08–30061–MAP.
• Parties: AMERICAN MEDICAL SYSTEMS, INC. and Laserscope, Inc., Plaintiffsv.BIOLITEC, INC., et al., Defendants.
• Court: U.S. District Court — District of Massachusetts

774 F.Supp.2d 375

2011 Markman 1195889

AMERICAN MEDICAL SYSTEMS, INC. and Laserscope, Inc., Plaintiffs

v.BIOLITEC, INC., et al., Defendants.

Civil Action No. 08–30061–MAP.

United States District Court, D. Massachusetts.

March 30, 2011.

David M. Ianelli, McCarter & English, LLP, Boston, MA, Edward A. Mas, II, Scott P. McBride, Alejandro Menchaca, Ronald H. Spuhler, McAndrews, Held & Malloy, Ltd., Chicago, IL, for Plaintiffs.Erik Paul Belt, McCarter & English, LLP, Boston, MA, James F. Dedonato, Eric E. Grondahl, McCarter & English, LLP, Hartford, CT, Francis H. Morrison, III, Axinn Veltrop & Harkrider, Hartford, CT, James P. Doyle, Axinn, Veltrop & Harkrider LLP, New York, NY, Sandra A. Frantzen, Leland G. Hansen, McAndrews Held & Malloy, Ltd., Chicago, IL, for Defendants.Ernest V. Linek, Banner & Witcoff, Ltd., Boston, MA, Richard J. Twilley, Mark D. Giarratana, McCarter & English, LLP, Hartford, CT for Plaintiffs/Defendants.

MEMORANDUM AND ORDER RE: PLAINTIFFS' MOTION THAT THE ASSERTED CLAIMS ARE NOT INVALID; PLAINTIFFS' MOTION FOR SUMMARY JUDGMENT OF INFRINGEMENT; PLAINTIFFS' MOTION FOR PARTIAL SUMMARY JUDGMENT OF FALSE ADVERTISING AND UNFAIR AND DECEPTIVE TRADE PRACTICES; DEFENDANTS' MOTION FOR SUMMARY JUDGMENT OF INVALIDITY, NONINFRINGEMENT, NONWILLFULLNESS, AND NO FALSE ADVERTISING OR UNFAIR TRADE PRACTICES; DEFENDANTS' MOTION TO STRIKE; PLAINTIFFS' MOTION TO PRECLUDE, AND DEFENDANTS' MOTION TO COMPEL

(Dkt. Nos. 166, 169, 174, 179, 184, 188, 218)

PONSOR, District Judge.

I. INTRODUCTION

This intricate and lavishly briefed piece of patent litigation turns on the proper construction of a single two-letter word: “on.” One may say that a dictionary rests “on” a table but, if an apple is then placed on the dictionary, is it, too, “on” the table? In one sense it is; in another, it is not. Here, the patented product claims, as an essential feature, a transmitting surface located “on” the tip of a waveguide. The accused device discloses a transmitting surface located “on” a cap placed over the tip of the waveguide. For the reasons set forth below, this critical difference mandates a finding that, as a matter of law, Defendants' device does not infringe Plaintiffs' patent. The court will therefore allow Defendants' motion for summary judgment on most of Plaintiffs' complaint.

The background of this case may be briefly summarized. In 2008, Plaintiffs American Medical Systems, Inc. (“AMS”) and Laserscope, Inc. filed a six-count complaint against Defendants Biolitec, Inc. (“Biolitec”), CeramOptec Industries, Inc., CeramOptec GmbH, AndaOptec, Ltd., and Biolitec SIA ¹ alleging: Count I, infringement of U.S. Patent No. 6,986,764 (“the '764 Patent”) against all Defendants except Biolitec; Count II, infringement of U.S. Patent No. 5,428,699 (“the '699 Patent”) against all Defendants; Count III, false advertising under the Lanham Act, 15 U.S.C. § 1125(a), against Biolitec; Count IV, unfair and deceptive trade practices in violation of Mass. Gen. Laws ch. 93A, §§ 2, 11, against Biolitec; Count V, untrue and misleading advertising in violation of Mass. Gen. Laws ch. 266, § 91, against Biolitec; and Count VI, unfair competition against Biolitec. (Dkt. No. 72, First Am. Compl.)

As of now, the litigation in this case has involved only Counts II through VI, namely the claims arising out of alleged infringement of Patent '699. ² Plaintiffs seek a judgment that Defendants have infringed Patent '699, a permanent injunction prohibiting the infringement, treble damages arising out of the infringement, an injunction against promotion of the accused product, treble damages arising out of damages incurred due to past promotion and to the alleged spread of misinformation about Plaintiffs' product, and attorneys' fees.

On October 28, 2009, the court issued its Memorandum and Order Regarding Construction of Patent Claims pursuant to Markman v. Westview Instruments, Inc., 52 F.3d 967, 976 (Fed.Cir.1995). Am. Med. Sys., Inc. v. Biolitec, Inc., 666 F.Supp.2d 216 (D.Mass.2009) (hereinafter “ Markman Order”). The parties filed cross motions for summary judgment on Counts II–VI and appeared for argument on those motions in September 2010. Defendant Biolitec's motions for summary judgment were filed collectively (Dkt. No. 179). Plaintiffs' separate motions are: Motion for Summary Judgment of Validity (Dkt. No. 166); motion for Summary Judgment of Infringement of the '699 Patent (Dkt. No. 169); Motion for Partial Summary Judgment of False Advertising under the Lanham Act and Unfair and Deceptive Trade Practices (Dkt. No. 174).

For the reasons that follow, the court will allow Plaintiffs' Motion for Summary Judgment of Validity of the '699 Patent (Dkt. No. 166) but will deny the remainder of Plaintiffs' motions (Dkt. Nos. 169 and 174). The court will deny Defendant Biolitec's motion as to invalidity but will allow the balance of the motion as to Counts II–VI (Dkt. No. 179).

II. BACKGROUND

On June 27, 1995, Plaintiff Laserscope, a wholly owned subsidiary of Plaintiff AMS, and inventor Russell Pon obtained a patent that described a side-firing laser probe that delivered laser energy to prostate tissue to vaporize or ablate it and to reduce the size of the organ. U.S. Pat. No. 5,428,699 (June 27, 1995). The patent was entitled “Probe Having Optical Fiber for Laterally Directing Laser Beam.” (Dkt. No. 72, Ex. 3.) This laser procedure is used to treat Benign Prostatic Hyperplasia (“BPH”), a condition in which an enlarged prostate compromises functioning of the bladder and urethra. Vaporization, or ablation, of some of the prostate tissue reduces the size of the prostate.

The side-firing laser system utilizes a laser probe that consists, principally, of a fiberoptic core surrounded by a cladding or sheath, which may or may not be surrounded by other layers of material. Laser light travels along the fiber core before reflecting off a surface at an angle such that ninety percent of the laser energy or more passes through a particular area on the transmitting surface and ultimately hits the prostate tissue. The cladding has a lower index of refraction than the fiber core to ensure that the laser light is internally reflected back into the fiber and does not “leak” before it is reflected onto the prostate tissue.

Plaintiff AMS has the exclusive right to make, use, sell, and offer to sell the '699 Patent. Plaintiff AMS manufactures products using the '699 Patent called the GreenLight PV Laser System and the GreenLight HPS Laser Platform (“GreenLight”), which it sells to urologists for the treatment of BPH. In 2004, Defendant Biolitec began to sell a product to treat BPH called the Evolve SLV SideFiber laser delivery probe (“Evolve”), which also employs a laser to ablate enlarged prostate tissue. Plaintiffs allege that Defendant Biolitec's Evolve laser system infringes the '699 Patent. Plaintiffs further allege that Defendant Biolitec employed deceptive sales practices and false advertising. The facts pertaining to these allegations will be discussed below.

III. DISCUSSION

A. Legal Standard.

Summary judgment is appropriate when there is no genuine issue of material fact and the moving party is entitled to judgment as a matter of law. Fed.R.Civ.P. 56(a). The court views the evidence in the light most favorable to the non-moving party and the moving party bears the burden of establishing the absence of a genuine issue of material fact. Celotex Corp. v. Catrett, 477 U.S. 317, 322–23, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). “This standard is not changed when the parties bring cross-motions for summary judgment, each nonmovant receiving the benefit of favorable inferences.” Chevron U.S.A. Inc. v. Mobil Producing Tex. & N.M., 281 F.3d 1249, 1253 (Fed.Cir.2002). The parties agree that no material facts are in dispute and that summary judgment at this stage of the proceedings is appropriate.

B. Invalidity.

The court will turn first to the issue of invalidity. Defendants allege that the '699 Patent is invalid as anticipated, as obvious, and for failure to meet the written description. The burden on Defendants to demonstrate invalidity is heavy. As the Federal Circuit has stated, “an issued patent is entitled to a statutory presumption of validity.... [C]lear and convincing evidence [must] be shown to invalidate a patent.” Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1347–48 (Fed.Cir.2005).

1. Anticipation.

Defendants allege that two patents, Japanese Patent No. 3–63377 (JP '377) and U.S. Patent No. 4,740,047 to Abe (Abe '047),³ each disclose every limitation of claims 1, 2, 4, 5, 25, 26, 30, and 33 of the ' 699 Patent. ⁴

The '699 Patent references the prior art in Abe '047 and explains that a flaw in the design of Abe '047 was that it could melt at high temperatures, causing burning of the probe and even of the patient. U.S. Pat. No. 5,428,699, column 1, lines 51–65. The '699 Patent sought to improve on Abe '047 by providing “an improved optical fiber tip for laterally directing a laser beam ... compris[ing] a waveguide, such as an optical fiber, having a tip.” Id. at column 2, lines 3–6. Plaintiffs assert that the following limitations are not present in Abe '047 or JP '377 but are disclosed by the ' 699 Patent in independent claims 1 and 25 and their dependent claims, which describe: (1) greater than ninety percent of radiation reflected being transmitted in the desired lateral direction; (2) a reflecting surface for internally reflecting electromagnetic radiation; (3) a transmitting surface on the tip of the waveguide; and (4) the cladding-to-core ratio required by claim 5 and its dependent claims. (Dkt. No. 167, Pls.' Mem. in Supp. of Mot. for Summ. J., at 11.)

a. Legal Standard for Anticipation.

Both parties have moved for summary judgment on the issue of anticipation under 35 U.S.C. § 102. “A determination that a patent is invalid as anticipated under 35 U.S.C. § 102 requires that a prior art reference disclose every limitation of the...