Dentsply Sirona Inc. v. Edge Endo, LLC
| Decision Date | 23 June 2020 |
| Docket Number | 1:17CV1041-JFB-SCY |
| Parties | DENTSPLY SIRONA INC., TULSA DENTAL PRODUCTS LLC D/B/A DENTSPLY SIRONA ENDODONTICS, Plaintiffs, v. EDGE ENDO, LLC, US ENDODONTICS, LLC, Defendants. |
| Court | U.S. District Court — District of New Mexico |
This matter is before the Court on Edge Endos, LLC's, and US Endodontics, LLC's motion for Summary Judgment of Non-Infringement of U.S. Patent No. 9,801,696, Doc. 311; Edge Endo, LLC's and US Endodontics, LLC's Motion for Summary Judgment of No Willful Infringement, Doc. 312; Dentsply Sirona Inc.'s and Tulsa Dental Products LLC's motion for Partial Summary Judgment, Doc. 313; and Dentsply Sirona Inc.'s and Tulsa Dental Products LLC's motion for Partial Summary Judgment that Certain Asserted Claims are Not Invalid, Doc. 314.
Plaintiffs filed their second amended complaint for patent infringement, alleging infringement by defendants of United States Patent Nos. 8,932,056 ("the '056 patent"), 9,351,803 ("the '803 patent"), 8,882,504 ("the '504 patent"), and 9,801,696 ("the '696 patent") (collectively the "Asserted Patents" or the "Patents-in-Suit"). Doc. 68. These patents allegedly cover revolutionary advances in the technology used in endodontic files. This action arises under the patent laws of the United States, Title 35 of the United States Code.
On January 13, 2015, the United States Patent and Trademark Office issued United States Patent No. 8,932,056 entitled "Swaggering Endodontic Instruments" to inventor Michael Scianamblo. On May 31, 2016, the United States Patent and Trademark Office issued United States Patent No. 9,351,803 entitled "Endodontic Instruments with Offset Centers of Mass" to inventor Michael Scianamblo. On November 11, 2014, the United States Patent and Trademark Office issued United States Patent No. 8,882,504 entitled "Swaggering Endodontic Instruments" to inventor Michael Scianamblo. On October 31, 2017, the United States Patent and Trademark Office issued United States Patent No. 9,801,696 entitled "Instruments for Drilling Dental Root Canals" to inventors Gilbert Rota and Paul-Henri Vallotton. Dentsply Sirona has been selling its ProTaper Next endodontic files since January 2013. Thereafter, contend plaintiffs, defendants promoted a product known as Edge Taper Encore which is allegedly identical to plaintiffs' ProTaper Next product.1
The endodontic files at issue are very small instruments having diameters of less than 1 millimeter.
The moving party has the initial burden of proving the absence of a genuinely disputed material fact relative to the claims in question. Celotex Corp. v. Catrett, 477 U.S.317, 330 (1986). The burden then shifts to the non-moving party to come forward with "specific facts showing that there is a genuine issue for trial." Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586-587 (1986); Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 252 (1986). "[I]f the issue is one of which the movant does not bear the burden of proof, and an adequate time for discovery has passed, summary judgment is warranted if the non-movant does not make a showing sufficient to establish the existence of each element essential to its cause of action." Am. Mech.ce Sols., LLC v. Northland Process Piping, Inc., 184 F. Supp. 3d 1030, 1052 n.8 (D.N.M. 2016) (citing Celotex Corp., 477 U.S. at 322-23).
An infringer is one who "without authority makes, uses, offers to sell, or sells any patented invention, within the United States . . . ." 35 U.S.C. § 271(a). Markman v. Westview Instruments, Inc., 52 F.3d 967, 976 (Fed. Cir. 1995), aff'd 517 U.S. 370 (1996).
"One who does not infringe an independent claim cannot infringe a claim dependent on (and thus containing all the limitations of) that claim." Monsanto Co. v. Syngenta Seeds, Inc., 503 F.3d 1352, 1359 (Fed. Cir. 2007) (quoting Wahpeton Canvas Co., Inc. v. Frontier, Inc., 870 F.2d 1546, 1552 (Fed. Cir. 1989)) (affirming summary judgment of non-infringement). To establish literal infringement, "every limitation set forth in a claim must be found in an accused product, exactly." Microsoft Corp., 817 F.3d at 1313 (citing Southwell Techs., Inc. v. Cardinal IG Co., 54 F.3d 1570, 1575 (Fed. Cir.1995)) (emphasis added); see also TechSearch, L.L.C. v. Intel Corp., 286 F.3d 1360, 1371 (Fed. Cir. 2002). Under the doctrine of equivalents, "the accused product or process contain[s] elements identical or equivalent to each claimed element of the patented invention." American Calcar, Inc. v. American Honda Motor Co., Inc., 651 F.3d 1318, 1338 (Fed. Cir. 2011) (quoting Warner-Jenkinson Co., Inc. v. Hilton Davis Chem. Co., 520 U.S. 17, 40 (1997). Although a party asserting a claim under the doctrine of equivalents cannot assert a theory that "would entirely vitiate a particular claim element," i.e., where it renders a claim limitation inconsequential or ineffective. Power Integrations, Inc. v. Fairchild Semiconductor Int'l, 843 F.3d 1315, 1344 (Fed. Cir. 2016) (quoting Lockheed Martin Corp. v. Space Systems/Loral Inc., 324 F.3d 1308, 1321 (Fed. Cir. 2003)).
The burden of proving infringement by a preponderance of the evidence falls on the patent owner. Amgen Inc. v. Sandoz Inc., 923 F.3d 1023, 1027 (Fed. Cir. 2019). Even though a determination of infringement of the properly construed claims is a question of fact, "[s]ummary judgment of noninfringement is . . . appropriate where the patent owner's proof is deficient in meeting an essential part of the legal standard for infringement, because such failures will render all other facts immaterial." TechSearch, L.L.C. v. Intel Corp., 286 F.3d 1360, 1369 (Fed. Cir. 2002) (citing London v. Carson Pirie Scott & Co., 946 F.2d 1534, 1537 (Fed. Cir. 1991)). "[S]pecific claim limitations cannot be ignored as insignificant or immaterial in determining infringement." TechSearch, 286 F.3d at 1373-74 (internal citations omitted).
An infringement determination is a two-step analysis. Terlep v. Brinkmann Corp., 418 F.3d 1379, 1381 (Fed. Cir. 2005). First, the court must construe the claims to determine their scope and meaning. Markman v. Westview Instruments, Inc., 52 F.3d967, 976 (Fed. Cir. 1995). This step, claim construction, is a question of law. Wright Med. Tech., Inc. v. Osteonics Corp., 122 F.3d 1440, 1443 (Fed. Cir. 1997). Second, the claim as properly construed must be compared to the accused product. See Markman, 52 F.3d at 976. This second step is a question of fact. Wright Med., 122 F.3d at 1443. "To prove infringement, the patentee must show that the accused device meets each claim limitation, either literally or under the doctrine of equivalents." Dynacore Holdings Corp. v. U.S. Philips Corp., 363 F.3d 1263, 1273 (Fed. Cir. 2004).
A. Edge Endo, LLC, US Endodontics, LLC motion for Summary Judgment of Non-Infringement of U.S. Patent No. 9,801,696, Doc. 311
Defendants and Counterclaim-Plaintiffs Edge Endo, LLC ("Edge Endo") and US Endodontics, LLC ("US Endo") (hereinafter "defendants") contend that the Court should find non-infringement of U.S. Patent No. 9,801,696 ("the '696 patent"). Plaintiffs contend that Edge's EdgeTaper Encore X1 endodontic file infringes claims 1, 2, 5, and 8-10 ("the Asserted Claims") of the '696 patent either literally or under the doctrine of equivalents. Defendants argue that the Edge Taper Encore X1 file does not literally infringe any of the asserted claims. Further, defendants argue that the plaintiffs' argument under the doctrine of equivalents fails as it vitiates a vital limitation of claim 1 of the '696 patent.
The '696 patent relates to an instrument for drilling dental root canals. Doc. 311-5, Ex. 3, '696 patent, 2:15-16. According to the '696 patent specification, the "first portion" of the endodontic instrument extends "from the point 3 towards the rear of the active part 1b and of which the centre of mass is located on the axis of rotation R of the instrument." Id., Ex. 3, 3:14-16 (emphasis added). "Thus, the first portion 1c and in particular the point 3 are centred with respect to the axis of rotation R of the instrument." Id. Ex. 3, 3:31-33. During prosecution of the application that resulted in the '696 patent, the applicants statedthat "[a]ny cross-section, e.g., 4a of the first portion 1c has a center of mass ma located on the axis of rotation R." Doc. 311-6, Ex. 4, Nov. 14, 2016 Response to Office Action, p. 4. The applicants also argued that the prior art did not "disclose or suggest that any cross-section of a first portion has a center of mass located on the axis of rotation." Id. at p. 7.
Claim 1 is the sole independent claim of the '696 patent. Doc. 311-5, Ex. 3, 8:1-9:13.2 There are apparently five tip sizes. The only one that plaintiff accuses defendants of infringing is the '696 patent.
With regard to literal infringement, the parties and their experts argue at great length regarding the center of mass and the axis of rotation. In order to prevail on its claim of literal infringement, Dentsply must prove that every cross-section in the "first portion" of the EdgeTaper Encore X1 has its center of mass coinciding with the axis of rotation. See, e.g., Microsoft Corp., 817 F.3d at 1313; Leviton Mfg. Co., Inc. v. Nicor, Inc., 557 F. Supp. 2d 1231, 1244 (D.N.M. 2007). The shape of the cross-section, argues defendants, is untethered to the center of mass.
Defendants argue that there is no genuine dispute of material fact that the Edge Taper Encore X1file lacks the limitation of claim 1 of the '696 patent, the sole independentclaim, requiring that "any cross-section of the first portion [of the active part of the instrument] has a center of mass located on the axis...
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