Medtronic Xomed, Inc. v. Gyrus Ent LLC
| Decision Date | 01 August 2006 |
| Docket Number | No. 3:04-cv-400-J-32MCR.,3:04-cv-400-J-32MCR. |
| Citation | 440 F.Supp.2d 1300 |
| Parties | MEDTRONIC XOMED, INC., Plaintiff/Counter Defendant, v. GYRUS ENT LLC, Defendant/Counterclaimant. |
| Court | U.S. District Court — Middle District of Florida |
A. James Anderson, Christopher T. Nace, Marla R. Butler, Robins, Kaplan, Miller & Ciresi LLP, Atlanta, GA, Jeffrey S. York, Robert Eric Bilik, McGuirewoods LLP, Jacksonville, FL, for Plaintiff/Counter Defendant.
Darle M. Short, Kristin K. Vidovich, Stephen T. Owen, Thomas J. Pardini, Oliff & Berridge, PLC, Alexandria, VA, Thomas Edward Bishop, Tanner Bishop, Jacksonville, FL, for Defendant/Counterclaimant.
This Order addresses the parties' cross motions for summary judgment filed in this patent infringement case involving a sinus surgical instrument and method of performing sinus surgery. Specifically, before the Court are Defendant's Motion for Summary Judgment (Doc. 161-2) and Plaintiff Medtronic Xomed Inc.'s Motion For Summary Judgment On Defendant's Section '02, '03 and 112 Defenses And Counterclaim. (Doc. 147-1.) The parties have filed multiple legal memoranda addressing the motions (Docs.161-2, 174-1, 187, 147-1, 170, 186-1), and voluminous exhibits (see Does. 144, 147, 155, 156, 166, 167, 174, 181, 182), which the Court has reviewed. The Court held oral argument on the motions on May 25, 2006.
Plaintiff Medtronic Xomed, Inc. ("Xomed"), alleges that Gyrus ENT LLC ("Gyrus") is infringing on its U.S. Patent No. 6,293,957 (filed Jan. 26, 1999)(issued Sept. 25, 2001) ("'957 Patent") entitled "Method of Performing Sinus Surgery Utilizing & Sinus Debrider Instrument."2 (Doe. 41-1.) Xomed alleges that Gyrus has used, sold, offered for sale and/or distributed allegedly infringing products, the ESSential® Shaver System (also used with the Turbo 7000) and Diego Powered Dissector System, and that Gyrus' actions constitute direct, contributory, and willful infringement, and inducement to infringe under 35 U.S.C. § 271. (Doc. 41-1, ¶¶ 8, 12, 15.) Gyrus denies the allegations, asserts that the '957 Patent is invalid, and alleges that the patent is unenforceable because of Xomed's alleged inequitable conduct. (Doc. 119.) The Court has construed the '957 Patent claims. (Doc. 77.)
As told by the parties, the '957 Patent describes a method and an instrument for performing sinus surgery using a powered sinus debrider instrument with blades, having a tube-within-a tube design. The rotating inner tube with blades is encased within a stationary outer tube. Unwanted tissue is dissected from the surgical site by a cutting surface at the end of the rotating inner tube; the instrument provides a suction passage through it for removing cut tissue from a sinus.3 Irrigating fluid is supplied to the tissue cutting surface through the annular space between the two tubes, such that the irrigating fluid "remains essentially within" the instrument during the dissection of the tissue, "to facilitate the removal of cut tissue without introducing fluid to the operative site." (Does. 144, Ex. 1 ("Abstract"), 77 at 30; see also Doc. 161-2 at 13.) The debrider was designed to alleviate the problem caused when the arthroscopic surgical cutting instruments used in sinus surgery "clog or jam from tissue buildup as there is little fluid present at the sinus surgery site," and to account for the problem of excessive fluid to the surgical site when fluid is used with such instruments. (Doc. 144, Ex. 1, col.1, ll.17-26.)
The application for the '957 Patent was filed with the Patent and Trademark Office ("PTO") on January 26, 1999. (Doc. 77 at 6.)4 The '957 patent was issued by the PTO September 25, 2001. (Doc. 144, Ex. 1, Ex. 16, ¶ 14.)
The '957 Patent makes three claims:
1. A method of performing sinus surgery utilizing a sinus debrider instrument having an outer tubular member with an opening at a distal end thereof, an inner member rotatably disposed within the outer tubular member with a tissue cutting surface of the inner member adjacent to the opening in the outer tubular member, and an annular space between the outer tubular member and the inner member forming a fluid passage to deliver fluid to the tissue cutting surface, said method comprising steps of
positioning a distal end of the sinus debrider instrument at an operative site within a sinus;
cutting tissue at the operative site within the sinus with the tissue cutting surface by rotating the inner member relative to the outer tubular member;
removing tissue cut by the tissue cutting surface from the sinus through a suction passage in the sinus debrider instrument; and
supplying fluid to the tissue cutting surface through the fluid passage in the sinus debrider instrument to facilitate the removing of cut tissue from the sinus.
2. The method of performing sinus surgery as recited in claim 1 wherein the inner member is tubular and has a lumen therein and wherein said step of removing cut tissue from the sinus includes aspirating the cut tissue through the lumen in the inner member.
3. A method of performing sinus surgery utilizing a sinus debrider instrument having an outer tubular member with an opening at a distal end thereof, an inner member rotatably disposed within the outer tubular member with a tissue cutting surface of the inner member adjacent the opening in the outer tubular member, and an annular space between the outer tubular member and the inner member forming a fluid passage to deliver fluid to the tissue cutting surface, said method comprising the steps of
positioning a distal end of the sinus debrider instrument at an operative site within the sinus;
cutting tissue at the operative site within the sinus with the tissue cutting surface by rotating the inner member relative to the outer tubular member;
removing tissue cut by the tissue cutting surface from the sinus through a suction passage in the sinus debrider instrument; and
supplying fluid to the tissue cutting surface through the fluid passage in the sinus debrider instrument to facilitate the removing of cut tissue from the sinus, said step of supplying fluid including supplying fluid from the fluid passage directly to the tissue cutting surface.
(Doc. 244, Ex. 1, Col. 6, Lines 17-65.)
The Court construed the language "supplying fluid to the tissue cutting surface through the fluid passage in the sinus debrider instrument," found in claims 1 and 3 of the '957 Patent, as:
supplying fluid to the tissue cutting surface through the fluid passage in the sinus debrider instrument such that fluid remains essentially within the instrument to be removed through the suction passage.
Gyrus and its predecessor have made, sold and distributed three basic debrider systems, consoles, hand pieces, and blades named the ESSential® Shaver System, Turbo 7000 and Diego™ Powered Dissector System surgical instruments. According to Xomed, the three instruments are essentially the same when used in sinus surgery. (See Docs. 41-1 at ¶ 8; 119 at If 8; 155, S-6, Ex. 2, ¶ 12; 155, S-6, Ex. 12 at 94; 155, S-6, Ex. 13 at 81; 161-2 at 14 n. 2; 161-2 at 16 n. 4; 174-1 at 12.) The ESSential and Turbo 7000 debrider systems were distributed by Gyrus prior to and after the issuance of the '957 Patent on September 25, 2001. Gyrus began distributing the Diego debrider system in August 2002. (Doc. 155, S-6, Ex. 2, ¶ 13.) At issue is whether the Gyrus debrider systems are designed such that, when used to cut tissue in sinus surgery, they can be and are indeed used in such a manner so as to infringe upon Xomed's '957 patent.
Summary judgment is appropriate in a patent case where 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. C.R. Bard, Inc. v. Advanced Cardiovascular Systems, Inc., 911 F.2d 670, 672-73 (Fed.Cir.1990)(citing Fed. R.Civ.P. 56(c)). "The party moving for summary judgment carries the burden of demonstrating the absence of any genuine issue of material fact, and that the party so moving is entitled to judgment as a matter of law." C.R. Bard, Inc., 911 F.2d at 672. "In ruling on a motion for summary judgment, the district court is required to view the evidence presented in a light most favorable to the nonmoving party and to draw all reasonable inferences in favor of the nonmoving party." C.R. Bard, Inc., 911 F.2d at 672. "[S]ufficient evidence must be forthcoming such as to allow a reasonable jury to return a verdict in favor of the nonmoving party." C.R. Bard, Inc., 911 F.2d at 673. "[S]ummary judgment is therefore appropriate when there is no genuine issue of material fact or when, drawing all factual inferences in favor of the nonmoving party, no `reasonable jury could return a verdict for the nonmoving party.'" Upsher-Smith Laboratories, Inc. v. Pamlab, L.L.C., 412 F.3d 1319, 1322 (Fed.Cir.2005). "`In rendering a decision on a motion for summary judgment, a court must "view the evidence presented through the prism of the substantive evidentiary burden" that would inhere at trial.'" Apple Computer, Inc. v. Articulate Systems, Inc., 234 F.3d 14, 20 (Fed.Cir. 2000) (citation omitted).
Xomed, in its Amended Complaint, alleges that Gyrus directly, contributorily and willfully infringed upon the '957 patent, and that it induced others to infringe. (Doc. 41-1, ¶¶ 12, 15.) Gyrus has moved for, summary judgment on Xomed's claims. (Doc. 161-2.) Both Gyrus and Xomed have moved for summary judgment on Gyrus' affirmative defenses and counterclaim asserting that the '957 Patent is invalid and unenforceable (Docs.147-1, 161-1). The...
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