Go Medical Industries Pty, Ltd. v. Inmed Corp.

• Decision Date: 09 July 2003
• Docket Number: No. 1:01-CV-313-TWT.,1:01-CV-313-TWT.
• Citation: 300 F.Supp.2d 1297
• Parties: GO MEDICAL INDUSTRIES PTY, LTD. and Alexander G.B. O'Neil, Plaintiffs, v. INMED CORPORATION d/b/a Rusch, International, a wholly owned subsidiary of Teleflex, Inc., and Alpine Medical, Inc. (formerly known as Medical Marketing Group, Inc.), Defendants.
• Court: U.S. District Court — Northern District of Georgia

300 F.Supp.2d 1297

GO MEDICAL INDUSTRIES PTY, LTD. and Alexander G.B. O'Neil, Plaintiffs, v. INMED CORPORATION d/b/a Rusch, International, a wholly owned subsidiary of Teleflex, Inc., and Alpine Medical, Inc. (formerly known as Medical Marketing Group, Inc.), Defendants.

No. 1:01-CV-313-TWT.

United States District Court, N.D. Georgia, Atlanta Division.

July 9, 2003.

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Patrick J. Flinn, Robin Lynn McGrath, Angela Payne James, Alston & Bird, Atlanta, GA, for plaintiffs.

William H. Needle, Bernard Luke Zidar, Needle & Rosenberg, Robert Benjamin Hill, William Stroud Sutton, McLain & Merritt, Ronnie L. Quigley, John Michael Harrison, Davis, Matthews & Quigley, Atlanta, GA, for defendants.

ORDER

THRASH, District Judge.

This is an action for patent and trademark infringement. It is before the Court on motions for summary judgment filed by all parties. In summary, the Court holds that the Defendants have infringed the Plaintiffs' patent, but the patent is invalid due to prior art because it is not entitled to a priority date of 1979. The conflicting claims to ownership of the O'Neil trademark for urinary catheters present questions of fact to be decided at trial. The Plaintiffs are entitled to summary judgment as to Defendants' non-trademark state law counterclaims.

I. BACKGROUND

Plaintiff Dr. Alexander G.B. O'Neil is a resident of Subiaco, Australia. Dr. O'Neil is the inventor of the introducer tipped catheter described in U.S. Patent No. 4,652,259 ("the '259 patent") which he owns. Plaintiff Go Medical Industries, Pty, Ltd. ("Go Medical") is an Australian limited liability company with an office and place of business in Subiaco, Australia. It was founded by Dr. O'Neil. Defendant Alpine Medical is a Georgia Corporation with its principal place of business in Decatur, Georgia. Alpine Medical was formerly known as Medical Marketing Group, Inc. ("Medical Marketing"). For this Order, the name change can be ignored.

Plaintiffs obtained the United States patent on their introducer tipped catheter in 1987, with a priority filing date of 1979. Plaintiffs initially sold their product in the United States through their United Kingdom distributor. Medical Marketing learned of Plaintiffs' catheter in 1987, and inquired about becoming a distributor for Plaintiffs' product. They reached an agreement which gave Medical Marketing the right to manufacture and market Plaintiffs' introducer tipped catheter in the United States. Initially, Medical Marketing purchased the catheters it distributed from Plaintiffs. However, it soon started manufacturing the catheters itself, and the resulting sales began to dominate Medical Marketing's business.

In 1992, C.R. Bard, Inc. ("Bard"), another medical device manufacturer, began marketing an introducer tipped catheter. Plaintiffs filed suit in this district against Bard for patent infringement. In that case, Bard filed several motions for summary judgment. The district court granted Bard's motion for summary judgment on unenforceability for inequitable conduct. After that ruling at the trial court level, Medical Marketing stopped paying royalties under its patent license from Plaintiffs. On appeal, the Federal Circuit disagreed with the district court, and reversed and remanded the case with instructions. The case then settled and never went to trial. After the settlement, Medical Marketing continued to withhold royalty payments. Plaintiffs eventually sent a notice of termination of the patent license to Medical Marketing, and thereafter filed this suit. Facts relevant to the individual motions are discussed in more detail below.

II. SUMMARY JUDGMENT STANDARD

Summary judgment is appropriate only when the pleadings, depositions, and affidavits submitted by the parties show that no genuine issue of material fact exists and that the movant is entitled to judgment as a matter of law. Fed.R.Civ.P. 56(c). An issue is genuine "if the evidence is such that a reasonable jury could return a verdict for the nonmoving party." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). An issue is material if it "might affect the outcome of the suit under the governing law." Id. The court should view the evidence and any inferences that may be drawn in the light most favorable to the nonmovant. Adickes v. S.H. Kress & Co., 398 U.S. 144, 158-159, 90 S.Ct. 1598, 26 L.Ed.2d 142 (1970). The party seeking summary judgment must first identify grounds that show the absence of a genuine issue of material fact. Celotex Corp. v. Catrett, 477 U.S. 317, 323-24, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). The burden then shifts to the nonmovant, who must go beyond the pleadings and present affirmative evidence to show that a genuine issue of material fact does exist. Anderson v Liberty Lobby, Inc., 477 U.S. 242, 257, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986).

III. DISCUSSION

In this case, motions for summary judgment have been filed on multiple issues, including patent invalidity based on priority date, patent invalidity based on pre-1979 prior art, unenforceability for inequitable conduct, patent infringement, trademark infringement, lost profits and various state law claims. For the purpose of this Order, the motions are discussed separately below.

A. Invalidity Based on Priority Date

The Plaintiffs' original United States patent application was filed in 1979. The '259 patent was issued based upon a 1985 continuation-in-part application. Defendants contend that the '259 patent is invalid because it was anticipated by an article written by Dr. O'Neil in 1982. There is no dispute that the article fully anticipates the '259 patent. (Plaintiffs' Response to Defendants' Statement of Undisputed Material Facts, ¶ 52.) The only issue is whether the patent is entitled to a 1979 priority filing date, which would place Dr. O'Neil's 1982 article outside the scope of the prior art. The Defendants contend that the 1979 application does not meet the written description, enablement and best mode requirements of 35 U.S.C. § 112 for the device subject to the '259 patent. If it does not, the Plaintiffs are not entitled to the 1979 priority date and the '259 patent is invalid under 35 U.S.C. § 102(b).

The 1979 application was directed to a "medical instrument" intended for insertion into a variety of body passages including the urinary tract and trachea. The penetration of the outer sheath into the passage was to go no further than the extent of the bacterial contamination in the passage. This distance was not specified in the application. The application was rejected by the examiner as anticipated or obvious over the prior art. After a series of continuation applications were rejected, Dr. O'Neil filed a continuation-in-part application in 1985, and the '259 patent issued in 1987. The continuation-in-part application of 1985 claimed priority to the 1979 parent application, and the patent examiner granted that priority date when the patent issued. This decision is presumed to be correct. Applied Materials, Inc. v. Advanced Semiconductor Materials America, Inc., 98 F.3d 1563, 1569 (Fed.Cir.1996). A continuation-in-part application contains subject matter from a prior application and may also contain additional matter not disclosed in the prior application. Augustine Medical, Inc. v. Gaymar Industries, Inc., 181 F.3d 1291, 1302 (Fed.Cir.1999). Subject matter that arises for the first time in the continuation-in-part application does not receive the benefit of the filing date of the parent application. Id. In this case, to be entitled to the 1979 priority date, the parent application's disclosure must satisfy the requirements of 35 U.S.C. § 112 with respect to the claims in the 1985 continuation-in-part application. 35 U.S.C. § 120. Put in the context of this case, the disclosure in the 1979 parent application must satisfy the written description, enablement and best mode requirements of section 112 for the introducer tipped urinary catheter claimed in the 1985 application.

1. Written Description Requirement

The first requirement of section 112 is that the written description in the 1979 application reasonably convey to one with ordinary skill in the art that Dr. O'Neil possessed the claimed device in 1979. 35 U.S.C. § 112. Whether Dr. O'Neil actually had the device is not material; rather, the issue is whether the written description indicates that he had the device when he filed the parent application. New Railhead Mfg., L.L.C. v. Vermeer Mfg. Co., 298 F.3d 1290, 1295-96 (Fed.Cir.2002). Moreover, it is not enough that the claimed device is made obvious by the parent application's declaration. The Defendants contend that the 1979 application does not describe a catheter with an insertion tip of "about 1.5 cm." It is undisputed that "about 1.5 cm" and "position of maximum pressure" do not appear in the 1979 parent application. The question then is whether the language of the parent application is the legal equivalent of the 1985 claim language, such that the necessary and only reasonable construction to be given the disclosure in the parent application by one skilled in the art, is the same as the construction such a person would give the claim language of the later application. Id. at 1295; Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1567-72 (Fed.Cir.1997); Wagoner v. Barger, 59 C.C.P.A. 1213, 463 F.2d 1377, 1380 (Cust. & Pat.App., 1972), superceded on other grounds, Kubota v. Shibuya, 999 F.2d 517 (Fed.Cir.1993); Behr v. Talbott, 27 U.S.P.Q.2d 1401, 1992 WL 512237 (Bd.Pat.App & Interf., 1992); see also Applied Materials, Inc. v. Advanced Semiconductor Materials America, Inc., 98 F.3d 1563, 1583 (Fed.Cir.1996) (Newman, J., dissenting) (citing Wagoner v. Barger). "The adequacy of the written description (i.e., the disclosure) is measured from the face of the application; the requirement is not satisfied if one of ordinary skill in the art...