Ethicon Endo-Surgery, Inc. v. Hologic, Inc.

• Decision Date: 27 January 2010
• Docket Number: Case No. 1:07cv834.
• Citation: 689 F. Supp.2d 929
• Court: U.S. District Court — Southern District of West Virginia
• Parties: ETHICON ENDO-SURGERY, INC., Plaintiff v. HOLOGIC, INC., et al., Defendants.

689 F.Supp.2d 929

ETHICON ENDO-SURGERY, INC., Plaintiff v. HOLOGIC, INC., et al., Defendants.

Case No. 1:07cv834.

United States District Court, S.D. Ohio, Western Division.

January 27, 2010.

David Edward Schmit, Frost Brown & Todd, Cincinnati, OH, David A. Steffes, James Asa High, Jr., Paul Justin Zegger, Peter C. Brensilver, Peter S. Choi, Sandra A. Bresnick, Sidley Austin LLP, Washington, DC, Michael J. Timmons, Johnson & Johnson, New Brunswick, NJ, for Plaintiff.

Allyson J. Portney, Jonathan Woodard, Jordan Hirsch, Lisa J. Pirozzolo, Patrick M. Callahan, Robert J. Gunther, Jr., Wilmer Cutler Pickering Hale and Dorr, LLP, Boston, MA, James Eugene Burke, Jennifer J. Morales, Keating Muething & Klekamp, Cincinnati, OH, for Defendants.

OPINION AND ORDER

MICHAEL R. BARRETT, District Judge.

This matter is before the Court pursuant to the motion for summary judgment (Doc. 108) filed by Hologic, Inc. and Suros Surgical Systems, Inc. (collectively, "Hologic"). Plaintiff, Ethicon Endo-Surgery, Inc. ("Ethicon") has opposed the motion (Doc. 132). A reply brief was filed by Hologic (Doc. 152). This matter is now ripe for review.

Background

Ethicon brings this lawsuit against Hologic for patent infringement of four patents, United States patent number 7,226,424 ("the '424 patent"), United States patent number 6,273,862 ("the '862 patent"), United States patent number 6,428,487 ("the '487 patent") and United States patent number 6,752,768 ("the '768 patent") as well as a false advertising claim under the Lanham Act and wilful infringement. Hologic counterclaims for invalidity of patent '487 and '768. Ethicon alleges that Defendants' ATEC ® breast biopsy systems infringe upon several of the claims in the above mentioned patents which relate to Ethicon's Mammotome® breast biopsy systems.

The patents-in-suit enable the vacuum assisted removal of multiple tissue samples with one needle insertion to perform a breast biopsy analysis. The biopsy needle or "piercer" enters the subject tissue mass and has a port or aperture so that tissue adjacent to the piercer falls into the aperture. Inside the piercer is a cutter that can move back and forth across the aperture or a hollow outer needle rapidly advances over the inner needle to shear tissue within the notched area. Percutaneous biopsy devices can be used with MRI, ultrasounds and stereotactic imaging and may be hand-held for greater mobility and access.

ANALYSIS

Summary judgment is appropriate "if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law." Fed.R.Civ.P. 56(c). A court must view the evidence and draw all reasonable inferences in favor of the nonmoving party. See Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986). The moving party bears the initial burden of showing the absence of a genuine issue of material fact, but then the nonmoving party must come forward with specific facts showing that there is a genuine issue for trial. Celotex Corp. v. Catrett, 477 U.S. 317, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986); Matsushita, 475 U.S. at 587, 106 S.Ct. 1348. However, the nonmoving party may not rest on the mere allegations in the pleadings. Fed.R.Civ.P. 56(e); Celotex, 477 U.S. at 324, 106 S.Ct. 2548. Summary judgment is proper "if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law." Fed.R.Civ.P. 56(c); Celotex Corp. v. Catrett, supra at 322, 106 S.Ct. 2548 "By its very terms, this standard provides that the mere existence of some alleged factual dispute between the parties will not defeat an otherwise properly supported motion for summary judgment; the requirement is that there be no genuine issue of material fact." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247-48, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986) (emphasis original). The substantive law of the case determines what facts are material and whether a higher burden of proof is required for a particular element. Street v. J.C. Bradford & Co., 886 F.2d 1472, 1479 (6th Cir.1989). Ultimately the Court must decide "whether the evidence presents sufficient disagreement to require submission to a jury or whether it is so one-sided that one party must prevail as a matter of law." Jarrett v. CSX Transp., Inc., 2008 WL 4239148, 2008 U.S. Dist. LEXIS 86256 (N.D.Ohio Sept. 10, 2008) citing Terry Barr Sales Agency, Inc. v. All-Lock Co., 96 F.3d 174, 178 (6th Cir.1996) (internal quotations omitted).

In ruling on a motion for summary judgment, "a district court is not required to speculate on which portion of the record the nonmoving party relies, nor is it obligated to wade through and search the entire record for some specific facts that might support the nonmoving party's claim." InterRoyal Corp. v. Sponseller, 889 F.2d 108, 111 (6th Cir. 1989), cert. denied, 494 U.S. 1091, 110 S.Ct. 1839, 108 L.Ed.2d 967 (1990); see also L.S. Heath & Son, Inc. v. AT&T Information Sys., Inc., 9 F.3d 561 (7th Cir.1993); Skotak v. Tenneco Resins, Inc., 953 F.2d 909, 915 n. 7 (5th Cir.), cert. denied, 506 U.S. 832, 113 S.Ct. 98, 121 L.Ed.2d 59 (1992) ("Rule 56 does not impose upon the district court a duty to sift through the record in search of evidence to support a party's opposition to summary judgment ..."). "Thus, a court is entitled to rely, in determining whether a genuine issue of material fact exists on a particular issue, only upon those portions of the verified pleadings, depositions, answers to interrogatories and admissions on file, together with any affidavits submitted, specifically called to its attention by the parties." Beatty v. UPS, 267 F.Supp.2d 823, 829 (D.Ohio 2003).

I. U.S. Patent '862

Hologic argues that it did not infringe on claim 1 of the Patent '862 and moves the court for a finding of non-infringement. Hologic states that Ethicon admits that it cannot prove literal infringement based upon this Court's Markman Order. (See Doc. 87.) In addition, Hologic argues that Ethicon cannot proved infringement under the doctrine of equivalents. Although Ethicon admits that there is no literal infringement based upon this Court's prior order (See Doc. 132, FN1), it argues that there is still infringement under the doctrine of equivalents.

"Summary judgment on the issue of infringement is proper when no reasonable jury could find that every limitation recited in a properly construed claim either is or is not found in the accused device either literally or under the doctrine of equivalents." PC Connector Solutions LLC v. SmartDisk Corp., 406 F.3d 1359, 1364 (Fed.Cir.2005). Although infringement under the doctrine of equivalents is a question of fact, "where the evidence is such that no reasonable jury could determine two elements to be equivalent, district courts are obliged to grant partial or complete summary judgment." DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1013, 1017 (Fed.Cir.2006) (quoting Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 39 n. 8, 117 S.Ct. 1040, 137 L.Ed.2d 146 (1997)).

The doctrine of equivalents is a doctrine "designed to do equity" and "to relieve an inventor from a semantic strait jacket," Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312, 1323 (Fed.Cir. 2009) quoting Perkin-Elmer Corp. v. Westinghouse Elec. Corp., 822 F.2d 1528, 1532 (Fed.Cir.1987). "The primary test for equivalency is the `function-way-result' or `triple identity' test, whereby the patentee may show an equivalent when the accused product or process performs substantially the same function, in substantially the same way, to achieve substantially the same result, as disclosed in the claim". Abbott Labs. v. Sandoz, Inc., 566 F.3d 1282, 1296-1297 (Fed.Cir.2009) citing Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 608, 70 S.Ct. 854, 94 L.Ed. 1097 (1950). However, that is not the only test. "Equivalency may also be proven where the differences between the invention as claimed and the accused product or process are insubstantial." Id. citing Hilton Davis Chem. Co. v. Warner-Jenkinson Co., 62 F.3d 1512, 1517-18 (Fed.Cir.1995) (en banc), rev'd on other grounds, 520 U.S. 17, 117 S.Ct 1040, 137 L.Ed.2d 146 (1997). The Supreme Court has said:

in our view, the particular linguistic framework used is less important than whether the test is probative of the essential inquiry: Does the accused product or process contain elements identical or equivalent to each claimed element of the patented invention? Different linguistic frameworks may be more suitable to different cases, depending on their particular facts. A focus on individual elements and a special vigilance against allowing the concept of equivalence to eliminate completely any such elements should reduce considerably the imprecision of whatever language is used. An analysis of the role played by each element in the context of the specific patent claim will thus inform the inquiry as to whether a substitute element matches the function, way, and result of the claimed element, or whether the substitute element plays a role substantially different from the claimed element.

Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. at 40, 117 S.Ct. 1040. Pursuant to Federal Circuit precedent, under either test, "a patentee must still provide particularized testimony and linking argument ... between the claimed invention and the accused device or process." Texas Instruments v. Cypress Semiconductor Corp., 90 F.3d 1558, 1567 (Fed.Cir. 1996).

Ethicon argues that the accused device has the equivalent of the "cutter axial transmission" of the '862 patent.¹ The Court has construed "cutter...