Applera Corp. v. Micromass Uk Ltd.
| Decision Date | 23 May 2002 |
| Docket Number | No. CIV.A.00-105-RRM.,CIV.A.00-105-RRM. |
| Citation | 204 F.Supp.2d 724 |
| Parties | APPLERA CORPORATION, MDS Inc., and Applied Biosystems/MDS Sciex, Plaintiffs, v. MICROMASS UK LTD. and Micromass, Inc., Defendants. |
| Court | U.S. District Court — District of Delaware |
Jack B. Blumenfeld, Esquire and Julia Heaney, Esquire, Morris, Nichols, Arsht & Tunnell, Wilmington, Delaware; Walter E. Hanley, Jr., Esquire, James Galbraith, Esquire, Lewis V. Popovski, Esquire, Jeffrey S. Ginsberg, Esquire, Mark A. Chapman, Esquire, and Huiya Wu, Esquire, Kenyon & Kenyon, New York, New York; counsel for plaintiffs.
Robert W. Whetzel, Esquire and Chad Shandler, Esquire, Richards, Layton & Finger, Wilmington, Delaware; James G. Hunter, Jr., Esquire, Kenneth G. Schuler, Esquire, and Kevin C. May, Esquire, Latham & Watkins, Chicago, Illinois; counsel for defendants.
This is a patent infringement case. Plaintiff Applera Corporation, formerly known as PE Corporation, is a Delaware corporation with its principal place of business in Norwalk, Connecticut. Plaintiff MDS Inc. is a Canadian corporation with its principal place of business in Toronto, Canada. Plaintiff Applied Biosystems/MDS Sciex, formerly known as Perkin-Elmer Sciex Instruments, is a Canadian partnership formed under the laws of Ontario and having a place of business there. Applera and MDS are general partners of Applied Biosystems/MDS Sciex. MDS is the owner of U.S. Patent No. 4,963,736 (the '736 patent), entitled "Mass Spectrometer and Method and Improved Ion Transmission." Applied Biosystems/MDS Sciex is the exclusive licensee of the '736 patent. The plaintiffs will be collectively referred to as AB/Sciex.1
Defendant Micromass UK Ltd. is a British corporation with its principal place of business in Manchester, United Kingdom.2 Micromass UK manufactures mass spectrometers including the Quattro Ultima. Defendant Micromass, Inc. is a Massachusetts corporation with its principal place of business in Beverly, Massachusetts. Micromass, Inc. distributes and sells mass spectrometers in the United States. The defendants will be collectively referred to as Micromass.
On February 18, 2000, AB/Sciex filed its complaint in this action alleging that Micromass's Quattro Ultima infringes one or more claims of the '736 patent. Micromass denied infringement, and raised affirmative defenses and counterclaims. Micromass's counterclaims seek a declaratory judgment that the '736 patent is invalid and unenforceable, and alleges that AB/Sciex has filed this suit in an improper effort to maintain monopoly power in violation of section 2 of the Sherman Act, 15 U.S.C. § 2, or attempted or conspired to do so.
In July 2001, Micromass introduced a redesigned Quattro Ultima, in which part of its allegedly infringing structure, a hexapole rod set, was replaced with a series of rings. AB/Sciex contends that the new Quattro Ultima, known as the "Ion Tunnel Quattro Ultima," infringes the '736 patent under the doctrine of equivalents. The original Quattro Ultima will be referred to as the "Hexapole Quattro Ultima."
On October 22 and 23, 2001, the parties filed dispositive motions. AB/Sciex sought summary judgment on Micromass's inequitable conduct defense and antitrust counterclaims. Micromass filed nine summary judgment motions. In five of those motions, Micromass contended that the Hexapole Quattro Ultima did not infringe the claims of the '736 patent. Micromass also sought summary judgment that: (i) the asserted claims of the '736 patent are invalid due to anticipation; (ii) the '736 patent is invalid for indefiniteness; (iii) the '736 patent is unenforceable due to inequitable conduct; and (iv) the Ion Tunnel Quattro Ultima does not infringe the claims of the '736 patent under the doctrine of equivalents.
On December 13, 2001, the court held a hearing in accordance with Markman v. Westview Instruments, Inc., 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996), to construe the disputed claim terms. On February 6, 2002, the court issued a memorandum opinion construing the claim terms. Applera Corp. v. Micromass UK Ltd., 186 F.Supp.2d 487 (D.Del.2002). On February 7, 2002, the court held a hearing to address the summary judgment motions. At that hearing, Micromass moved for reconsideration of the court's claim construction. It also presented its summary judgment motions. The court took the motions under advisement and permitted the case to go to trial. The court will present its decision on Micromass's motion for reconsideration in this opinion.
The court bifurcated the trial into two components; a jury trial on the infringement and invalidity issues, and a bench trial on inequitable conduct and equitable estoppel. The ten-day jury trial began March 4, 2002. At the conclusion of that trial on March 15, 2002, Micromass moved for judgment as a matter of law under Federal Rule of Civil Procedure 50(b). The court reserved judgment. The jury unanimously found that the Hexapole Quattro Ultima literally infringed the two independent claims of the '736 patent, claims 1 and 14. The jury also found that: (i) the Ion Tunnel Quattro Ultima infringed claims 1 and 14 under the doctrine of equivalents; (ii) Micromass's infringement was not willful; (iii) the claims of the '736 patent were not invalid3; and (iv) AB/ Sciex's mass spectrometers were marked with notice of the '736 patent since February 1999. The jury awarded $47.5 million in damages, of which $41.3 million was attributable to the Hexapole Quattro Ultima.
On April 3, 2002, the court conducted a one-day bench trial on Micromass's inequitable conduct and equitable estoppel defenses. On inequitable conduct, Micromass contends that the '736 patent is unenforceable because AB/Sciex failed to present the PTO with material prior art, including an earlier European Patent application of one of the inventors of the '736 patent. Micromass also contends that AB/Sciex did not present certain experimental evidence to the PTO during the prosecution of the patent, and made false and misleading statements describing the prior art to the PTO during reexamination. With respect to equitable estoppel, Micromass contends that before it developed the Quattro Ultima, AB/Sciex led it to believe that the '736 patent would not be asserted against it because it was invalid. The parties have submitted proposed findings of fact and conclusions of law on those topics.
On April 1, 2002, Micromass filed its post-trial motion for judgment as a matter of law or for a new trial. That motion addresses the jury's verdicts on the validity of the asserted claims of '736 patent, Micromass's infringement, and damages. On validity, Micromass contends that it established at trial that the claims of the '736 patent are anticipated by the European Patent application discussed earlier, and that its claims would have been obvious to one of skill in the art based on certain combinations of prior art references. With respect to infringement, Micromass alleges that AB/Sciex failed to prove that its devices met two of the claim limitations of the asserted claims of the '736 patent and that the Ion Tunnel Quattro Ultima was infringed those claims under the doctrine of equivalents. On damages, Micromass argues that AB/Sciex is not entitled to lost profits damages as a matter of law, and that the jury could not reasonably accept AB/Sciex's reasonable royalty estimates.
AB/Sciex has also submitted two post-trial motions. It moved for summary judgment on Micromass's antitrust counterclaims as inconsistent with the jury's verdicts on invalidity and infringement. It also moved to alter or amend the judgment to add pre-judgment interest and enjoin further infringement.
This is the court's decision on all of motions described above.
The following facts are taken from the court's earlier opinion, the '736 patent and its prosecution history, and the evidence presented at both the jury and bench trials. For purposes of Micromass's assertions of inequitable conduct and equitable estoppel, the following recitation comprises the court's findings of fact.
The '736 patent discloses a technology used in mass spectrometers. Mass spectrometers are used to analyze the chemical composition of trace substances in a sample gas or liquid. They are useful in a number of endeavors, including pharmaceutical experimentation and testing food and drink for minimum quality standards. Mass spectrometers operate by applying an electrical charge to the molecules of the substance being analyzed, resulting in charged molecules known as ions. By applying an electrical field to the ions, the substance being analyzed can be separated into its constituent parts using the ratio of their molecular weight to the charge.
The '736 patent is directed to a typical type of mass spectrometer, referred to as a quadrupole mass spectrometer. Figure 1 of the '736 patent is an example of a quadrupole mass spectrometer or two-stage mass spectrometer. It is comprised of four basic types of structures—an ionization chamber, an ion guide, a mass analyzer, and a detector. Beginning at the right of Figure 1, the ionization chamber (16) contains a duct (14) for inputting the trace substance. The substance is ionized by applying an electric charge with an electric discharge needle (18). The ionization chamber is typically at atmospheric pressure. The ions proceed next through a curtain gas chamber (24) and into the ion guide (30). The ion guide is a set of electrode rods (32) in a vacuum chamber created by pumping out the ambient gas (31). The quadrupole mass spectrometer has four electrode rods, spaced apart in three dimensions to create an interior space through which the ions are...
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