Cohesive Technologies, Inc. v. Waters Corp.
| Citation | 543 F.3d 1351 |
| Decision Date | 07 October 2008 |
| Docket Number | No. 2008-1031.,No. 2008-1029.,No. 2008-1059.,No. 2008-1030.,No. 2008-1032.,2008-1029.,2008-1030.,2008-1031.,2008-1032.,2008-1059. |
| Parties | COHESIVE TECHNOLOGIES, INC., Plaintiff-Appellant, v. WATERS CORPORATION, Defendant-Cross Appellant. |
| Court | United States Courts of Appeals. United States Court of Appeals for the Federal Circuit |
Robert H. Stier, Jr., Pierce Atwood LLP, of Portland, ME, argued for plaintiff-appellant. With him on the brief were Michael J. Sullivan and Sean L. Sweeney.
Wiilliam A. Scofield, Jr., Lahive & Cockfield, LLP, of Boston, MA, argued for defendant-cross appellant. With him on the brief was Sibley P. Reppert.
Before MAYER, LINN, and PROST, Circuit Judges.
This is a patent infringement case. Cohesive Technologies, Inc. ("Cohesive") brought three related actions accusing Waters Corporation ("Waters") of infringing U.S. Patent No. 5,772,874 (the "'874 patent") and U.S. Patent No. 5,919,368 (the "'368 patent"). In the first action, No. 98-CV-12308, Cohesive accused Waters's 30 µm Oasis high-performance liquid chromatography ("HPLC") columns (the "30 µm columns") of infringing the '874 patent. See Cohesive Techs., Inc. v. Waters Corp., 526 F.Supp.2d 84, 88 (D.Mass.2007). In the second action, No. 99-CV-11528, Cohesive accused the same 30 µm columns of infringing the '368 patent. See id. In the third action, No. 01-CV-12307, Cohesive accused Waters's 25 µm Oasis HPLC columns (the "25 µm columns") of infringing both patents. See id.
A jury in the first action found that the '874 patent was not invalid, and that the 30 µm columns infringed the '874 patent. See id. The district court then held a combined bench trial and hearing on damages, willful infringement, and inequitable conduct in the first action, and on preliminary injunction and summary judgment motions in the second and third actions. The district court entered judgment in favor of Cohesive in the first action, granted Cohesive's motion for summary judgment of infringement and no invalidity in the second action, and awarded damages. Id. at 126. However, in the third action, the district court granted Waters's motion for summary judgment of noninfringement, concluding that the 25 µm products did not infringe either patent. Id. Both parties appeal numerous aspects of the judgment.
As to the 30 µm products, we conclude that the district court correctly construed the term "rigid" and properly denied Waters's motion for judgment of noninfringement as a matter of law. We further conclude that the district court committed no clear error in concluding that Waters failed to prove the deceptive intent necessary to sustain its claim of inequitable conduct. However, we agree with Waters that the district court was wrong to enter judgment as a matter of law on anticipation without submitting the issue to the jury.
As to the 25 µm products, we disagree with the district court's construction of "greater than about 30 µm." Under the correct construction, Waters was not entitled to summary judgment of no literal infringement. The district court was, however, correct to grant Waters's motion for summary judgment of no infringement under the doctrine of equivalents, though not for the reasons that the district court articulated.
As to damages, because the district court incorrectly considered the 25 µm product as an acceptable noninfringing substitute, and because it is unclear whether the other available product, standing alone, would have been an acceptable substitute, we vacate the district court's judgment that Cohesive was not entitled to lost profits and remand for reconsideration by the district court in the first instance. We find no clear error in the district court's conclusion that Waters's infringement was not willful. Finally, we decline Cohesive's request to assign this matter to a different district court judge on remand. Accordingly, we affirm-in-part, reverse-in-part, vacate-in-part, and remand.
The '874 and '368 patents both relate to HPLC. HPLC is a process for separating identifying, and measuring compounds contained in a liquid. Pharmaceutical companies often use HPLC in drug testing to separate absorbed compounds from blood. In HPLC, a liquid containing the compounds to be measured is passed under pressure through a packed column of chromatographically active particles. See '874 patent col.1 ll.24-28. Because the different molecular components in the liquid have different affinities for the particles in the column, each component is extracted from the liquid at a different rate and, therefore, at a different location along the column. See id. col.1 ll.28-32. The effectiveness of HPLC at separating molecules from the liquid depends on several variables, including the size and structure of the particles in the column. See id. col.2 ll.3-19.
The '368 patent issued from a divisional application of the application that resulted in the '874 patent, and the patents share the same specification. Cohesive asserted claims 1, 3, 7, 9, 15, 16, and 20 of the '874 patent and claims 1, 3, and 8 of the '368 patent. See Cohesive, 526 F.Supp.2d at 107. Claim 1 of the '874 patent recites:
Chromatography apparatus comprising, in combination,
a chromatographic body formed as a substantially uniformly distributed multiplicity of rigid, solid, porous particles with chromatographically active surfaces, said particles having average diameters of greater than about 30 µm, the interstitial volume between said particles being not less than about 45% of the total volume of said column; and
means for loading said surfaces with at least one solute that is reactive with said surfaces, by flowing a liquid mixture containing said solute through said body at a velocity sufficient to induce flow of said mixture within at least a substantial portion of said interstitial volume at a reduced velocity greater than about 5,000.
'874 patent col.20 ll.20-34. Each of the asserted claims requires essentially the same two key limitations at issue in this appeal: particles that are "rigid" and have average diameters "greater than about 30 µm." See id. col.20 ll.38-42, 54-56, 60-65 (claims 3, 7, and 9 depending from claim 1); id. col.21 l.36-col.22 l.8 (); id. col.22 ll.9-21 (claim 16 requiring "rigid, solid, porous particles" with "substantially uniform average diameters in the range between about 30 to about 500 µm"); id. col.22 ll.33-35 (claim 20 depending from claim 16); '368 patent col.20 ll.14-28 (claim 1 requiring step of "packing ... rigid, solid, porous particles" with "average diameters of not less than about 30 µm"); id. col.20 ll.32-36, 53-56 (claims 3 and 8 depending from claim 1).1
Cohesive brought its first infringement action against Waters in 1998, alleging that the 30 µm columns infringed the '874 patent. In 1999, while the first action was pending, the '368 patent issued. Cohesive then filed a second infringement action against Waters, asserting that use of the same 30 µm columns infringed the method claims of the '368 patent.
In 2001, the district court held a sixteen-day jury trial in the first action. During trial, Waters alleged and presented evidence that the claims of the '874 patent were anticipated by seven separate prior art references. Waters also alleged that the claims of the '874 patent were obvious, both in light of each reference independently, and in light of various combinations of the references. Over Waters's objection, the district court chose not to submit anticipation to the jury, because Waters had alleged obviousness, and the district court "[thought] of anticipation as being a subset of obviousness." J.A. 5710. Accordingly, the district court sua sponte entered a directed verdict in favor of Cohesive, finding that the '874 patent was not anticipated. Cohesive, 526 F.Supp.2d at 89.
The jury returned a verdict finding that the 30 µm columns infringed the '874 patent and that the '874 patent was not obvious. By the time of the verdict, Waters had stopped selling the 30 µm columns, and instead was selling a replacement product with smaller particles — the 25 µm columns. Cohesive then filed its third infringement action, alleging that the replacement 25 µm columns infringed both the '874 and the '368 patents. Cohesive moved for a preliminary injunction against the 25 µm columns.
The district court held a combined bench trial and hearing in 2002. At that proceeding, the court heard evidence and argument on the issues of inequitable conduct, willful infringement, and damages in the first case. Id. at 88. The district court also considered the parties' cross-motions for summary judgment in the second case, concerning whether those same 30 µm columns infringed the '368 patent. Id. at 89. Additionally, at the request of the district court, Cohesive presented its motion for a preliminary injunction in the third case (concerning the replacement 25 µm columns) in the form of a motion for summary judgment, and Waters made an oral cross-motion for summary judgment of noninfringement at the hearing.
Five years later, the district court entered a memorandum and order disposing of all issues in all three cases. In the first case, concerning infringement of the '874 patent by the 30 µm columns, the district court: (1) denied Waters's post-trial motions for judgment as a matter of law on infringement and invalidity, id. at 95; (2) found that Waters had failed to meet its burden to prove inequitable conduct, id. at 103; and (3) found that Waters's infringement was not willful, id. at 106-07. In the second case, concerning infringement of the '368 patent by the 30 µm columns, on cross-motions for summary judgment, the district court: (1) granted Cohesive's motion for summary judgment of direct and indirect infringement, id. at 112; and (2) granted Cohesive's motion for summary judgment of no invalidity, id...
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