Cohesive Technologies, Inc. v. Waters Corp.
| Decision Date | 31 August 2007 |
| Docket Number | Civil Action No. 99-11528-DPW.,Civil Action No. 98-12308-DPW.,Civil Action No. 01-12307-DPW. |
| Citation | 526 F.Supp.2d 84 |
| Parties | COHESIVE TECHNOLOGIES, INC., Plaintiff, v. WATERS CORPORATION, Defendant. |
| Court | U.S. District Court — District of Massachusetts |
Lee C. Bromberg, Bromberg & Sunstein LLP, Erik Paul Belt, Boston, MA, Robert
H. Stier, Jr., Pierce Atwood, Portland, ME, for Plaintiff.
Ralph A. Loren, Palmer & Dodge LLP, Sibley P. Reppert, William A. Scofield, Jr., Lahive & Cockfield, LLP, Boston, MA, for Defendant.
Plaintiff Cohesive Technologies produces equipment for high-performance liquid chromatography ("HPLC"), a process scientists use to separate a mixture of chemical compounds into its various components. Cohesive has patented an apparatus and method for increasing the efficiency of HPLC separations by increasing the rate of flow of solvent (the liquid in which the mixture of compounds is dissolved) through the HPLC column, which is filled with solid particles. These cases stem from allegations by Cohesive Technologies that the Oasis HPLC columns manufactured by Waters Corporation infringe Cohesive's 5,772,874 ('874) and 5,919,368 ('368) patents.
After a sixteen day trial, a jury in Civil Action No. 98-12308 returned a verdict for Cohesive finding infringement and upholding the validity of the infringement was willful and thus that the court should award enhanced damages and attorneys fees on that ground. After the jury verdict, I held a bench trial on the issues of inequitable conduct, willful infringement, and damages.
Cohesive filed two separate civil cases related to Civil Action No. 98-12308. Civil Action No. 99-11528 alleges that the same columns that infringed the '874 patent infringe Cohesive's '368 patent, a divisional patent of the '874 patent. In the second related case, Civil Action No. 01-12307, Cohesive seeks to enjoin Waters from making, selling, or using columns with 25-micron-sized particles, as opposed to the 30-micron-sized particles used in the accused columns in the other two cases.
To provide a general context for discussion, a brief description of the technology at issue might be helpful. High-performance liquid chromatography is a form of column chromatography used frequently in biochemistry and analytical chemistry. HPLC is used to separate components of a mixture by using a variety of chemical interactions between the substance being analyzed and the chromatography column. An HPLC column generally consists of a "stationary phase" of solid particles, such as silica. Silica is a sand-like material to which other compounds adsorb with different affinities. Performing HPLC generally involves the elution of a mixture of compounds dissolved in a appropriate solvent, called the "mobile phase," over the stationary phase. As the mobile phase elutes along the column, the compounds dissolved in the solvent react with and adsorb to the solid particles. Because of the variation in adsorption rates to the stationary phase, the components of the compounds elute at different times from the column, allowing the scientist to collect and analyze the separated components.
The '874 patent, issued on June 30, 1998 to Cohesive's Hubert Quinn and Joseph Takarewski, claims an apparatus for what Cohesive calls "turbulent flow" HPLC. The '368 patent issued on July 9, 1999 and claims the method for using the '874 apparatus. The invention purports to provide a means for efficient HPLC separations within shorter total elution or run times. Cohesive and Waters both sell hardware for liquid chromatography systems as well as the disposable or consumable columns that the systems require.
In Part I of this memorandum, I will address the question of infringement and validity of the '874 patent raised by Waters' renewed motion for judgment as a matter of law in Civil Action No. 98-12308. In Part II, I will address my factual findings and conclusions of law on the issues of inequitable conduct and willful infringement in that case. In Part III, I will address the questions of infringement and validity of the '368 patent raised by cross motions for summary judgment submitted by the parties in Civil Action No. 99-11528. In Part IV, I will address the question of summary judgment in Civil Action No. 01-12307, and, in Part V, I address the issue of damages.
In Civil Action No. 98-12308, Cohesive alleged that Waters infringed the '874 patent by its manufacture and sale of 1 × 50 mm Oasis HLB Extraction Columns containing Oasis 30 micron particles, and Waters counterclaimed that the '874 patent was invalid by reasons of anticipation and obviousness under 35 U.S.C. §§ 102 and 103. The issues of infringement and invalidity on the grounds of obviousness were tried to a jury, which returned a verdict in favor of Cohesive after I granted a directed verdict for Cohesive on the issue of anticipation under 35 U.S.C. § 102. Waters filed a motion for a judgment as a matter of law on the issue of infringement at the close of the evidence, which I denied. Waters has renewed its motion for judgment as a matter of law, adding a motion for a judgment as a matter of law on the issue of obviousness.
Waters first argues that Cohesive has failed to provide sufficient evidence to support a jury verdict that the particles in Waters' columns are rigid. Every claim of the OASIS HLB solid particles must be rigid in order for Waters to be liable for infringement.
The jury found that Waters' device did contain rigid particles. In the Markman hearing in this case, I construed "rigid" to mean "an object's capacity to maintain substantially zero changes in density and volume under packing pressure of at least about 5000 psi and as a consequence substantially to resist plastic deformation under such pressure." I further defined "plastic deformation" as "a change in the dimensions of an object under load that is not recovered when the load is removed." I explicitly did not construe the term "rigid" to exclude polymeric particles (as opposed to the monomeric particles referred to in the preferred embodiment of the '874 patent).
Quinn's trial testimony provides sufficient evidence that the particles used in the accused Waters columns are rigid. He testified on direct examination that the Waters' particles met the claim construction above:
Q: If rigid means an object's capacity to maintain substantially zero changes in density and volume, under packing pressure of at least about 5,000 psi, and as a consequence, substantially to resist plastic deformation under such pressure, do the Waters' particles qualify as rigid?
...
Tr. Day 4 at 38. Cohesive's attorney continued to examine Quinn on his observation that the particles did not collapse at 5,000 psi or greater:
...
Id. at 39-41. Quinn further testified that, "if the particles collapse, they will shut off all the flow channels, and you won't be able to get any flow through the column." Id. In other words, Quinn testified he was able to determine whether the particles collapsed under pressure by simply observing the flow of the packed column. I determined in a three-day Daubert hearing before trial that Quinn was a qualified expert and used scientifically reliable methods to generate his expert opinion. After post-trial review, I similarly conclude that Quinn's testimony provides sufficient evidence for a reasonable fact finder to determine that the Waters particles are rigid within the meaning of the '874 patent.
Waters does not dispute that Quinn's method of observing the particles to determine rigidity is scientifically reliable. Waters argues instead that Cohesive provided no evidence of the first part of a two part definition of "rigid." More particularly, Waters asserts that in order for Cohesive to prove that Waters infringed any claim of the '874 patent it must provide evidence that the particles (1) maintain substantially zero changes in density and volume under pressure of at least about 5000 psi, and (2) substantially resist plastic deformation at that pressure. It argues that Cohesive has provided evidence of (2) but not (1). A; particle can compress under pressure, Waters asserts, but still seem as though it resists plastic deformation if it quickly regains its structure when pressure is released. Waters likens a particle that satisfies only element (2) of the definition to a Nerf ball, which would collapse under high pressure but immediately spring back to its original shape when normal pressure resumes.
Although I agree with Waters that Cohesive must provide...
To continue reading
Request your trial
-
Presidio Components Inc. v. American Technical Ceramics Corp..
...obtained advice of counsel as part of the totality of the circumstances in determining willfulness”); Cohesive Techs., Inc. v. Waters Corp., 526 F.Supp.2d 84, 103 (D.Mass.2007) (noting that “whether the infringer solicited or followed the advice of counsel” was one of the factors to be cons......
-
Veracode, Inc. v. Appthority, Inc.
...contract damages, because the reasonable royalty rate is essentially a contract measure of damages. See Cohesive Techs., Inc. v. Waters Corp. , 526 F.Supp.2d 84, 125–26 (D.Mass.2007), aff'd in part, rev'd in part on other grounds, 543 F.3d 1351 (Fed.Cir.2008); see also Real View, LLC v. 20 ......
-
Cohesive Technologies, Inc. v. Waters Corp.
...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......
-
Bowling v. Hasbro, Inc., C.A. No. 05-229 S.
...able to make and sell the patented article, in the market, at a reasonable profit." Bowling II at *2 (quoting Cohesive Tech. v. Waters Corp., 526 F.Supp.2d 84, 121 (D.Mass. 2007)). 5. The Georgia-Pacific factors are, in brief: (1) royalties that a patentee receives for the patent in suit; (......
-
Construing patent claims according to their "interpretive community": a call for an attorney-plus-artisan perspective.
...the continued existence of issues "stemming from an advice of counsel defense to willfulness"); Cohesive Techs., Inc. v. Waters Corp., 526 F. Supp. 2d 84, 103-04 (D. Mass. 2007) (stating that, in assessing willfulness, "a court should consider . . . whether the infringer solicited or follow......
-
Chapter §20.05 Enhanced Damages and Willful Infringement
...advice of counsel as part of the totality of the circumstances in determining willfulness"); Cohesive Techs., Inc. v. Waters Corp., 526 F. Supp. 2d 84, 103 (D. Mass. 2007) (noting that "whether the infringer solicited or followed the advice of counsel" was one of the factors to be considere......
-
Toc Spring 2009 Supplemental - Table of Contents
...Lexicon Medical, LLC v. Northgate Techs., Inc., 292 Fed. Appx. 42, 51 (Fed. Cir. 2008). See also Cohesive Techs. Inc. v. Waters Corp., 526 F. Supp. 2d 84, 104 (D. Mass. 2007) (no willfulness because defendant obtained opinion of counsel in good faith, and there was a bona fide dispute over ......