Bos. Sci. Corp. v. Cook Grp.

• Decision Date: 31 January 2023
• Docket Number: 1:17-cv-03448-JRS-MJD
• Parties: BOSTON SCIENTIFIC CORP. and BOSTON SCIENTIFIC SCIMED, INC., Plaintiffs, v. COOK GROUP INCORPORATED and COOK MEDICAL LLC, Defendants.
• Court: U.S. District Court — Southern District of Indiana

BOSTON SCIENTIFIC CORP. and BOSTON SCIENTIFIC SCIMED, INC., Plaintiffs,
v.
COOK GROUP INCORPORATED and COOK MEDICAL LLC, Defendants.

No. 1:17-cv-03448-JRS-MJD

United States District Court, S.D. Indiana, Indianapolis Division

January 31, 2023

ORDER ON MOTIONS FOR SUMMARY JUDGMENT AND MOTION TO PRECLUDE

JAIES R. SWEENEY II, JUDGE UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF INDIANA.

This is a patent infringement case. Before the Court is Defendants' Motion to Preclude Evidence and Untimely Theory Relied on by Plaintiffs in their Motion for Summary Judgment (hereafter, "Motion to Preclude"). (ECF No. 634.) Additionally, the Court will address Plaintiffs' and Defendants' Cross-Motions for Summary Judgment. (ECF Nos. 620 & 630.)

I. Background^[1]

Plaintiffs/Counterclaim Defendants Boston Scientific Corporation ("BSC") and Boston Scientific Scimed, Inc. ("BSSI") (collectively "Plaintiffs" or "Boston Scientific") brought this patent infringement action against Defendants/Counterclaim Plaintiffs Cook Group Incorporated ("CGI") and Cook Medical LLC (collectively with CGI,

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"Defendants" or "Cook"), in the District of Delaware in October of 2015. (ECF No. 1.) The three asserted patents are U.S. Patent No. 8,685,048 ("'048 patent"), U.S. Patent No. 8,974,371 ("'371 patent"), and U.S. Patent No. 9,271,731 ("'731 patent") (collectively, the "Asserted Patents" or "patents-in-suit"). (ECF Nos. 451-2, 451-4, 451-5.) In 2016, Defendants filed several Inter Partes review ("IPR") petitions directed to the Asserted Patents. (ECF Nos. 74, 254.) In August of 2017, the District of Delaware granted Defendants' request to stay the case pending the IPRs. (ECF No. 304.) While stayed, the case was transferred to this Court. (ECF No. 316.)

Plaintiffs and Defendants are both major competitors in the medical device industry. The Asserted Patents are directed toward a reversibly closeable endoscopic hemostatic clip. (See ECF No. 451-2 at 2.) Such clips are used for treating gastrointestinal bleeding. (Id. at 39.) Plaintiffs assert seven claims across their three patents-in-suit against two of Defendants' products: (1) the Instinct and (2) the Instinct Plus (each an "Accused Product" and collectively the "Accused Products"). The following is a summary of the remaining claims asserted against the Accused Products: (1) Claims 3, 4, 7, and 14 of the '048 patent are asserted against both the Instinct and the Instinct Plus; (2) claim 13 of the '371 patent is asserted against both the Instinct and the Instinct Plus; and (3) claims 5 and 19 of the '731 patent are asserted against only the Instinct Plus. The parties have brought many arguments; the Court will address each in turn.

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II. Defendants' Motion to Preclude Evidence

The Court will first address Defendants' Motion to Preclude, (ECF No. 634), in order to determine the scope of evidence that is available at the summary judgment stage. Defendants ask the Court to exclude from consideration on summary judgment the following: (1) Mr. Leinsing's opinions on cumulativeness; (2) Mr. Lhymn's opinions on IPR estoppel; and (3) Plaintiffs' reliance on a "new" infringement theory for the "link" required by claims 3, 4, 7, and 14 of the '048 patent.

A. Mr. Leinsing's Opinions on Cumulativeness

Defendants seek to exclude Leinsing's opinions regarding cumulativeness between certain prior art devices and printed publications provided in support of Plaintiffs' arguments relating to IPR estoppel, arguing the opinions are untimely in violation of the Court's Case Management Plan and Fed.R.Civ.P. 26(a). (Defs.' Mot. to Preclude, ECF No. 636 at 9.) Per the Court's Case Management Plan, "[t]he party with the burden of proof as to any liability issue . . . shall serve the report required by Fed.R.Civ.P. 26(a)(2) on or before January 11, 2022." (ECF No. 468 at 1, ¶ II.C.) "If a party fails to provide information or identify a witness as required by Rule 26(a) or (e), the party is not allowed to use that information or witness to supply evidence on a motion, at a hearing, or at a trial, unless the failure was substantially justified or is harmless." Fed.R.Civ.P. 37(c)(1). The arguments in this section can therefore be broken down into three parts: (1) whether Plaintiffs had the burden of proof on cumulativeness (therefore requiring service by January 11, 2022) and, if so, (2)

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whether their untimely expert report written by Leinsing was substantially justified or (3) harmless.

1. Burden of proof as to cumulativeness

Plaintiffs and Defendants agree that Plaintiffs bear the ultimate burden of proof on Plaintiffs' IPR estoppel argument under 35 U.S.C. § 315(e). (ECF No. 636 at 10 (citing Clearlamp LLC v. LKQ Corp., No. 12 C 2533, 2016 WL 4734389, at *9 (N.D. Ill. Mar. 18, 2016)); Pls.' Resp., ECF No. 672 at 13 (same).) Therefore, Plaintiffs needed to serve any expert reports related to their IPR estoppel argument by January 11, 2022. Rather than dispute this requirement, Plaintiffs instead attempt to distinguish cumulativeness from IPR estoppel and suggest that they did not bear the burden of proof as to this issue. (ECF No. 672 at 13.)

The Court can quickly dismiss two arguments. First, Plaintiffs argue that Defendants' reliance on Clearlamp is inappropriate because that case did not address the issue of cumulativeness of prior-art systems. (Id.) This is not correct. See Clearlamp, 2016 WL 4734389, at *8-10 (discussing cumulativeness at length). Second, Plaintiffs argue that Leinsing "first needed to know the particular structures of the prior-art systems on which Nicosia was relying" before rendering an opinion on whether those structures were disclosed in a printed publication subject to IPR estoppel. (ECF No. 672 at 13 (emphasis in original).) But this argument has nothing to do with the burden of proof; rather, as Plaintiffs themselves seem to realize, it is more appropriate in determining whether the delay in serving the report

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was justified. (See ECF No. 672 at 13-14 (discussing why Leinsing could not feasibly address cumulativeness in his initial report until reading Nicosia's report).)

Plaintiffs' attempt to distinguish cumulativeness from IPR estoppel fails; cumulativeness is not a separate doctrine from IPR estoppel. Rather, cumulativeness is one avenue that a party can use to argue IPR estoppel. IPR estoppel, codified under 35 U.S.C. § 315(e)(2), states that a "petitioner in a post-grant review of a claim in a patent . . . may not assert . . . in a civil action arising in whole or in part under section 1338 of title 28 . . . that the claim is invalid on any ground that the petitioner raised or reasonably could have raised during that post-grant review." In other words, the IPR estoppel doctrine seeks to prevent a defendant from making the same invalidity arguments they previously made (or reasonably could have made) in a prior IPR proceeding. Cumulativeness is the idea that a "petitioner cannot put forth invalidity arguments in litigation that rely solely upon patents or printed publications that could have been raised in the IPR, and then claim that IPR estoppel does not apply because these printed materials reflect or represent a prior art product." Medline Indus., Inc. v. C.R. Bard, Inc., No. 17 C 7216, 2020 WL 5512132, at *5 (N.D. Ill. Sept. 14, 2020) ("The IPR petitioner in that situation is improperly attempting to disguise a ground that could have been raised during the IPR as one that could not have been raised."); see also Vaporstream, Inc. v. Snap Inc., No. 2:17-cv-00220-MLH (KSx), 2020 WL 136591, at *23 (C.D. Cal. 2020 Jan. 13, 2020) (citation omitted) ("'[I]f a patent challenge is simply swapping labels for what is otherwise a patent or printed publication invalidity ground in order to "cloak" its prior art ground and "skirt"

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estoppel,' then § 315(e)(2) estoppel still applies."). Thus, because cumulativeness is a way for a patentee to show that a petitioner is estopped from presenting certain invalidity arguments at the district court based on prior art systems and devices, cumulativeness and IPR estoppel are inextricably linked, and as such, the burden of proof is on the patentee (here, Plaintiffs).

Therefore, per the Court's Case Management Plan, Plaintiffs had to serve any report with arguments on cumulativeness on or before January 11, 2022. They did not. The Court must next determine whether this delay was justified or harmless.

2. Whether the delay in serving Leinsing's report was justified

Plaintiffs argue that the delay in Leinsing's report was justified because Defendants' invalidity contentions, served on December 27, 2021, "failed to identify the structures of the prior-art systems upon which [Defendants] would rely." (ECF No. 672 at 13-14.) This, too, is incorrect.

The Court fails to find, nor have Plaintiffs pointed to, any examples of "particular structures" that Nicosia identified in his report that were not likewise identified in Defendants' earlier invalidity contentions. (See id.) Plaintiffs repeatedly assert that Defendants' contentions lacked references to these "particular structures," and Leinsing himself makes a general and vague claim that the contentions "often do not identify the particular features or structure of the device" upon which Defendants rely for their invalidity arguments. (Leinsing Report, ECF No. 621-77 at 19.) Plaintiffs thus argue that Leinsing "needed to know" the specific structures Nicosia would be relying on in order to analyze whether those structures were disclosed in a

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printed publication subject to IPR estoppel; in other words, he simply could not have provided his cumulativeness opinion based on Defendants' invalidity contentions alone. (ECF No. 672 at 13-14.)

Upon examining the opinion ultimately given by Leinsing and the structures in fact relied on in support, the Court fails to see how this is the case. As an example, an analysis of...