Electro Medical Systems, S.A. v. Cooper Life Sciences, Inc., 94-1003

• Decision Date: 12 September 1994
• Docket Number: No. 94-1003,94-1003
• Citation: 34 F.3d 1048,32 USPQ2d 1017
• Parties: ELECTRO MEDICAL SYSTEMS, S.A., Plaintiff-Appellant, v. COOPER LIFE SCIENCES, INC., Dentsply International Inc., and Dentsply Research & Development Corp., Defendants-Appellees.
• Court: U.S. Court of Appeals — Federal Circuit

Page 1048

34 F.3d 1048

32 U.S.P.Q.2d 1017

ELECTRO MEDICAL SYSTEMS, S.A., Plaintiff-Appellant, v. COOPER LIFE SCIENCES, INC., Dentsply International Inc., and Dentsply Research & Development Corp., Defendants-Appellees.

No. 94-1003.

United States Court of Appeals, Federal Circuit.

Sept. 12, 1994.

Preston Moore, Attorney, Morrison & Foerster, San Francisco, CA, argued, for plaintiff-appellant. With him on the brief were Grant L. Kim and James R. Shay.

Dale M. Heist, Attorney, Woodcock, Washburn, Kurtz, Mackiewicz and Norris, Philadelphia, PA, argued, for defendants-appellees. With him on the brief were Albert W. Preston, Jr., John P. Donohue, Jr., Thomas R. Boland and Ellen A. Efros. Of counsel was Edward J. Hanson, Jr.

Before MAYER, LOURIE, and RADER, Circuit Judges.

LOURIE, Circuit Judge.

Electro Medical Systems, S.A. ("EMS") appeals from a judgment of the United

                States District Court for the Eastern District of New York holding U.S. Patents 3,882,638, 3,972,123, and 4,412,402 infringed and not invalid, and awarding increased damages and attorney fees based on its finding of willful infringement.  Electro Medical Sys., S.A. v. Cooper Life Sciences, Inc., Civ. Action No. CV-86-0607 (E.D.N.Y. Aug. 25, 1993) (final judgment order). 1  We affirm-in-part and reverse-in-part
                

BACKGROUND

The three patents in suit ² relate to equipment for delivering gas, abrasive, and liquid to the surface of a tooth in order to remove plaque and stain without damaging the tooth surface. The devices claimed in the '638 and '123 patents direct a stream of abrasive-laden gas to a tooth surface and a stream of liquid to the tooth surface adjacent to the target area of the abrasive-laden gas stream. After the abrasive particles impact the tooth, they are taken up by the liquid and then removed in suspension form through the use of a common suction tube. The '402 patent relates to an improved device using abrasive particles that are water soluble, wherein the device delivers air, abrasive, and liquid to a tooth surface as a continuous liquid "curtain" surrounding a pressurized jet of abrasive-laden gas.

Appellant EMS is a Swiss manufacturer of dental equipment, distributing products in over fifty different countries. In 1984, EMS filed suit against appellees Cooper Life Sciences Incorporated, Dentsply International Incorporated, and Dentsply Research & Development Corporation (collectively "Dentsply") in the Northern District of Illinois, seeking a declaratory judgment of invalidity and non-infringement of patents relating to air abrasive equipment used to clean teeth, including those at issue here. The '638 and '123 patents are owned by Cooper and exclusively licensed to Dentsply. The '402 patent is owned by Dentsply.

Despite EMS's allegations that Dentsply had asserted foreign counterpart patents against EMS and its distributors and had threatened to sue potential United States distributors of EMS's products, Dentsply moved to dismiss for lack of a justiciable controversy. Dentsply contended that it did not intend to charge EMS with infringement of the U.S. patents and that EMS lacked the capacity and intent to sell its products in the United States. The Northern District of Illinois denied Dentsply's motion to dismiss.

In 1986, on motion of the defendants, the Illinois court transferred the claims against Cooper to the Eastern District of New York for reasons of convenience, and severed and stayed the claims against Dentsply because Dentsply had no "presence" in New York. Subsequently, Dentsply was allowed to join the New York action because it by then had acquired rights to Cooper's patent.

Dentsply then initiated an International Trade Commission (ITC) proceeding against EMS and others for alleged patent infringement. After discovery was nearly completed, Dentsply moved to dismiss its ITC claims against EMS, which the ITC did, with prejudice.

In November of 1987, Dentsply again moved to dismiss the district court action, claiming that there was no justiciable controversy. As part of its motion, Dentsply noted that

[at a status conference in September of 1987, the magistrate] strongly recommended that, if EMS truly were interested in a determination of the issues of patent validity and infringement, EMS undertake sufficient acts in the United States to create an actual controversy. [The magistrate] made clear his view that, absent at least one sale by EMS in the United States, the court would dismiss the infringement Mem. of Points and Auth. of Def. in Support of Motion to Dismiss. The court again denied Dentsply's motion.

issue for lack of subject matter jurisdiction. Obviously, the same conclusion applies to the issue of patent validity.

In 1990, six years after commencement of this litigation, after the completion of discovery and three months before the scheduled trial, Dentsply threatened to bring a third motion to dismiss for lack of a justiciable controversy. In response, EMS sold six products. Dentsply then amended its answer to add a counterclaim for patent infringement, alleging that EMS was a willful infringer. EMS stipulated in a pretrial order that it "[would] not waive any claim of attorney/client privilege in defense of any allegation of willful infringement or demand for counsel fees." Invoking the privilege at trial, EMS declined to disclose the substance of any advice it received from its counsel prior to the United States sales.

After a full bench trial, the court issued a decision finding all of the claims in suit to be infringed and not invalid, and awarding $8,752.00 in compensatory damages based on EMS's six sales. Drawing an adverse inference from EMS's refusal to produce an opinion of counsel, the court found that EMS was a willful infringer, and awarded double damages and $942,528.90 in attorney fees. The award was affirmed on reconsideration. EMS appeals from the judgment of validity and infringement and from the award of increased damages and attorney fees.

DISCUSSION

1. Validity

At trial, EMS challenged the validity of claim 20 of the '402 patent on the basis that it was anticipated by U.S. Patent 2,405,854 to Ruemelin under 35 U.S.C. Sec. 102(b). Anticipation must be proved by clear and convincing evidence. Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d 628, 632, 2 USPQ2d 1051, 1053 (Fed.Cir.), cert. denied, 484 U.S. 827, 108 S.Ct. 95, 98 L.Ed.2d 56 (1987). Anticipation under 35 U.S.C. Sec. 102(b) requires the presence in a single prior art disclosure of each and every element of a claimed invention, Lewmar Marine, Inc. v. Barient, Inc., 827 F.2d 744, 747, 3 USPQ2d 1766, 1767 (Fed.Cir.1987), cert. denied, 484 U.S. 1007, 108 S.Ct. 702, 98 L.Ed.2d 653 (1988), and is a question of fact subject to review under the clearly erroneous standard, Ralston Purina Co. v. Far-Mar-Co., Inc., 772 F.2d 1570, 1574, 227 USPQ 177, 179 (Fed.Cir.1985).

The court determined that EMS had failed to introduce clear and convincing evidence that the Ruemelin patent discloses every element of claim 20. Specifically, the court found that the Ruemelin patent did not disclose a substantially unpressurized flow of liquid or a continuous liquid curtain surrounding the pressurized jet of particle-laden gas. Electro I, slip op. at 55. EMS asserts that these features are "inherent" in the Ruemelin patent because, although Ruemelin discloses a blasting and spraying gun utilizing pressurized liquid, the Ruemelin device "could be set to any water pressures."

We do not agree that the subject matter of the claim was anticipated. "The mere fact that a certain thing may result from a given set of circumstances is insufficient to prove anticipation." Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1268-69, 20 USPQ2d 1746, 1749 (Fed.Cir.1991) (quoting In re Oelrich, 666 F.2d 578, 581, 212 USPQ 323, 326 (CCPA1981)) (emphasis added). EMS was required to prove that an unpressurized flow is necessarily present in the Ruemelin disclosure, and that it would be so recognized by persons of ordinary skill. Id. at 1268, 20 USPQ2d at 1749. EMS did not discharge its burden; thus, the district court properly concluded that EMS failed to prove invalidity of claim 20.

EMS also challenged the validity of claims 4, 12, 16, and 21 of the '402 patent on the basis that the subject matter of the claims would have been obvious under 35 U.S.C. Sec. 103. Obviousness is a question of law, based on underlying factual inquiries, which are subject to the clearly erroneous standard of review. Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1568-69, 1 USPQ2d 1593, 1597-98 (Fed.Cir.), cert. denied, 481 U.S. 1052, 107 S.Ct. 2187, 95 EMS does not challenge the court's underlying findings here; rather, it merely asserts that "if [the claims] were construed for validity as the district court construed [them] for infringement[, they would be] invalid under 35 U.S.C. Sec. 103." We have considered this assertion and find it unpersuasive. EMS has not convinced us of reversible error in the court's determination that the '402 patent is not invalid.

L.Ed.2d 843 (1987). In a thorough opinion, the magistrate undertook an analysis of the obviousness question, carefully considering the scope and content of the prior art, the differences between the claims and the prior art, the level of ordinary skill in the art, and objective evidence of non-obviousness, including long-felt but unsatisfied need, failure of others, commercial success, copying, and tribute by others. See Graham v. John Deere Co., 383 U.S. 1, 17, 86 S.Ct. 684, 693-94, 15 L.Ed.2d 545 (1966). The court concluded that EMS had not met its burden of demonstrating by clear and convincing evidence that the claimed subject matter would have been obvious to one of ordinary skill in the art.

2. Infringement

The court found that the accused EMS device infringed claims 2 and 3 of the '638 patent, claim 4 of the '123 patent, and claims 4, 12, 16, 20, and 21 of the '402 patent. EMS asserts that the...