Boston Scientific Corp. v. Johnson & Johnson

Decision Date19 February 2008
Docket NumberNo. C 02-00790 SI.,C 02-00790 SI.
Citation550 F.Supp.2d 1102
CourtU.S. District Court — Northern District of California
PartiesBOSTON SCIENTIFIC CORPORATION, et al., Plaintiffs, v. JOHNSON & JOHNSON, et al., Defendants.

Alison R. Aubry, David J. Cerveny, Dominic E. Massa, Gregory F. Noonan, Joseph J. Mueller, Michael J. Summersgill, William G. McElwain, Wilmer Cutler Pickering Hale and Dorr LLP, Boston, MA, Edward Francis Mullowney, Antoinette E. Baker, James R. Warnot Jr., Matthew T. Byrne, Shearman & Sterling, New York, NY, Christine E. Duh, Nathan Loy Walker, Mark Daniel Selwyn, Wilmer Cutler Pickering Hale and Dorr LLP, Palo Alto, CA, Teague I. Donahey. Sidley Austin LLP, San Francisco, CA, for Plaintiffs.

David T. Pritikin, Douglas I. Lewis, David Giardina, Hugh A. Abrams, Jon Michael Spanbauer, Louis Fogel, Tara C. Norgard, William Hans Baumgartner, Jr., Sidley Austin LLP, Chicago, IL, Susan E. Bower, Robert Burns Morrill, Sidley Austin LLP, San Francisco, CA, for Defendants.

ORDER RE: VARIOUS POST-TRIAL MOTIONS

SUSAN ILLSTON, District Judge.

On February 15, 2008, the Court heard oral argument on plaintiffs' and defendants' motions for renewed judgment as a matter of law, plaintiffs' motions for a new trial, and defendants' motion for damages and equitable relief. Having considered the arguments of counsel and the papers submitted, the Court hereby DENIES all of plaintiffs' motions. In addition, the Court DENIES defendants' renewed motion for judgment as a matter of law and DENIES defendants' motion for retrospective damages. The Court reserves judgment on defendants' motion for equitable relief.

BACKGROUND

In 2002, plaintiffs Boston Scientific Corporation, Boston Scientific Scimed, Inc., Scimed Life Systems, Inc., and Schneider (Europe) GmbH (collectively "BSC") brought suit against defendants Johnson & Johnson and Cordis Corporation (collectively "Cordis") for infringement of six patents. The first four patents were invented at Schneider (Europe) by Gerhard Kastenhofer and are directed to a bilayered catheter tube design for balloon angioplasty catheters.

Catheters generally consist of a hollow tube with a wire ("guide wire") running through the hollow interior (or "lumen") of the tube. The insertion (or "distal") end of the catheter shaft is encapsulated in a tubular balloon. The guide wire fits closely inside the tube, so that the inner surface of the tube contacts and slides over the guide wire. These tubular catheters are inserted into and through arteries to reach constricted and clogged sites. The guide wire is inserted first, and acts to guide the catheter tube into position within the artery.

Catheters having this basic structure were already in existence prior to the filing of the Kastenhofer patents. However, no tube material that was stiff enough to be pushed though the twists of arteries was also slippery enough to slide easily over the guide wire without often getting stuck. Gerhard Kastenhofer, a scientist at Schneider (Europe), invented an improved bilayered catheter design that addressed this problem, which was claimed in the Kastenhofer patents.1

The Kastenhofer catheter design involves a multilayered tube having an outer layer of stiff material to keep the tube firm enough to be pushed up an artery, and an inner layer of soft slippery material to allow the tube to slide easily over the guide wire. The Kastenhofer patents disclose that the bilayered tube is made by a process called coextrusion, in which the molten materials of the inner and outer layers are pushed out together through tubular dies so that the materials merge to form the required tubular structure. In Kastenhofer's preferred embodiment, the outside layer is made of a polyamide (nylon), and the inner layer is made of high density polyethylene ("HDPE").

Also at issue in this case is BSC's infringement of Cordis' patents. Defendants counterclaimed that plaintiffs are infringing three Cordis-owned U.S. patents invented by Carlos Fontirroche and Jason Querns (collectively, the "Fontirroche patents").2 As with the Kastenhofer patents the Fontirroche patents are directed to a bilayered catheter tube design for balloon angioplasty catheters.

A jury trial was held from October 9, 2007 to October 31, 2007. BSC's argument that Cordis infringed the claims of the Kastenhofer patents, as well as Cordis' argument that BSC infringed Claim 7 of the Fontirroche patent, were submitted to the jury. Also submitted to the jury were preliminary factual questions relating to the obviousness of the Kastenhofer patents. The jury found for Cordis on its invalidity contention that BSC did not reduce the invention of the Kastenhofer patents to practice in January 1992 and that Christine Byam was not correctly named as a joint inventor of the Kastenhofer patents. The jury also found that BSC infringed Claim 7 of the Fontirroche patent under the doctrine of equivalents. The question of damages for BSC's infringement of the Fontirroche patent was not submitted to the jury because Cordis inexplicably chose not to call its damages expert and therefore failed to put on evidence regarding a reasonable royalty rate.

Now before the Court are: (1) BSC's renewed motion for judgment as a matter of law and motion for a new trial as to the validity of the Kastenhofer patents; (2) BSC's renewed motion for judgment as a matter of law and motion for a new trial as to the jury's finding of infringement of the Fontirroche patent; (3) Cordis' renewed motion for judgment as a matter of law as to the jury's findings on both patents; and (4) Cordis' motion for damages and equitable relief stemming from BSC's infringement of the Fontirroche patent.

LEGAL STANDARD
I. Renewed motion for judgment as a matter of law: Rule 50(b)

Federal Rule of Civil Procedure 50(b) provides:

If the court does not grant a motion for judgment as a matter of law made under Rule 50(a), the court is considered to have submitted the action to the jury subject to the court's later deciding the legal questions raised by the motion. No later than 10 days after the entry of judgment ... the movant may file a renewed motion for judgment as a matter of law and may include an alternative or joint request for a new trial under Rule 59. In ruling on the renewed motion, the court may: (1) allow judgment on the verdict, if the jury returned a verdict; (2) order a new trial; or (3) direct the entry of judgment as a matter of law.

The party moving for judgment as a matter of law bears a heavy burden. Granting a renewed motion for judgment as a matter of law is proper when the evidence construed in the light most favorable to the non-moving party permits only one reasonable conclusion as to the verdict and that conclusion is contrary to the jury's verdict. See Air-Sea Forwarders, Inc. v. Air Asia Co., 880 F.2d 176, 181 (9th Cir. 1989).

The question in a motion for judgment as a matter of law is whether there is substantial evidence to support the jury finding for the non-moving party. See Johnson v. Paradise Valley Unified Sch. Dist, 251 F.3d 1222, 1227 (9th Cir. 2001); Autohaus Brugger, Inc. v. Saab Motors, Inc., 567 F.2d 901, 909 (9th Cir. 1978). In ruling on such a motion, the trial court may not weigh the evidence or assess the credibility of witnesses in determining whether substantial evidence exists to support the verdict. See Mosesian v. Peat, Marwick, Mitchell & Co., 727 F.2d 873, 877 (9th Cir.1984). Substantial evidence is more than a scintilla of evidence. See Consol. Edison Co. v. NLRB, 305 U.S. 197, 229, 59 S.Ct. 206, 83 L.Ed. 126 (1938); Chisholm Bros. Farm Equip. Co. v. Int'l Harvester Co., 498 F.2d 1137, 1140 (9th Cir.1974). Rather, it is defined as such relevant evidence as reasonable minds might accept as adequate to support a conclusion even if it is possible to draw two inconsistent conclusions from the evidence. See Landes Constr. Co. v. Royal Bank of Canada, 833 F.2d 1365, 1371 (9th Cir. 1987).

II. Motion for new trial: Rule 59(a)

Rule 59 of the Federal Rules of Civil Procedure provides that "[t]he court may, on motion, grant a new trial ... for any reason for which a new trial has heretofore been granted in an action at law in federal court." Rule 59 gives the trial judge the power to prevent a miscarriage of justice. Moist Cold Refrigerator Co. v. Lou Johnson Co., 249 F.2d 246 (9th Cir. 1957). A new trial may be ordered to correct manifest errors of law or fact, but "the burden of showing harmful error rests on the party seeking the new trial." Malhiot v. S. Cal. Retail Clerks Union, 735 F.2d 1133 (9th Cir. 1984). A motion for new trial may invoke the court's discretion insofar as it is based on claims that "the verdict is against the weight of the evidence, that the damages are excessive, or that, for other reasons, the trial was not fair to party moving; and may raise questions of law arising out of alleged substantial errors in admission or rejection of evidence or instructions to the jury." Montgomery Ward & Co. v. Duncan, 311 U.S. 243, 251, 61 S.Ct. 189, 85 L.Ed. 147 (1940). Where a movant claims that a verdict is against the clear weight of the evidence, a new trial should be granted where, after giving full respect to the jury's findings, the judge "is left with the definite and firm conviction that a mistake has been committed" by the jury. Landes Const. Co., 833 F.2d at 1371-72.

The authority to grant a new trial under Rule 59 "is confided almost entirely to the exercise of discretion on the part of the trial court." Allied Chem. Corp. v. Daiflon, 449 U.S. 33, 36, 101 S.Ct. 188, 66 L.Ed.2d 193 (1980) (per curiam); see Vickery v. Fisher Governor Co., 417 F.2d 466, 470 (9th Cir.1969) (trial court has "wide judicial discretion" in considering new trial motion). A trial court may grant a motion for a new trial if the verdict is "contrary to the clear weight of the...

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