Nobelpharma AB v. Implant Innovations, Inc., 91 C 4632.

• Court: United States District Courts. 7th Circuit. United States District Court (Northern District of Illinois)
• Writing for the Court: Alan I. Becker, Burditt & Radzius, Chicago, IL, for counter-defendant Nobelpharma USA Inc
• Citation: 875 F. Supp. 481,34 USPQ 2d 1090
• Parties: NOBELPHARMA AB, Plaintiff, v. IMPLANT INNOVATIONS, INC., Defendant.
• Docket Number: No. 91 C 4632.,91 C 4632.
• Decision Date: 31 January 1995

875 F. Supp. 481
34 USPQ 2d 1090

NOBELPHARMA AB, Plaintiff,
v.
IMPLANT INNOVATIONS, INC., Defendant.

No. 91 C 4632.

United States District Court, N.D. Illinois, Eastern Division.

January 31, 1995.

875 F. Supp. 482

Alan I. Becker, Daniel G. Litchfield, Douglas B. Harper, Burditt & Radzius, Chicago, IL, Douglas E. Olson and Jeffrey M. Olson, Lyon & Lyon, Los Angeles, CA, for plaintiff Nobelpharma AB, a Swedish corp.

Edward L. Foote, Peter Charles McCabe, III, Winston & Strawn, Gomer Winston Walters, James Ray Wood, Steven J. Soucar, Wood, Phillips, VanSanten, Hoffman & Ertel, Stephen Gary Rudisill, Arnold, White & Durkee, Chicago, IL, Philip G. Koenig, Jason M. Honeyman, Wolf, Greenfield & Sacks, P.C., Boston, MA, for defendant Implant Innovations, Inc.

Alan I. Becker, Burditt & Radzius, Chicago, IL, for counter-defendant Nobelpharma USA Inc.

MEMORANDUM OPINION

BRIAN BARNETT DUFF, District Judge.

On May 10, 1994, out of an abundance of caution, we held a conference with the parties to this suit and suggested to them that, to bring solid closure to the preceding patent trial, we may need to rule on the outstanding issue of inequitable conduct. At the conference, we asked the parties to brief us on whether such a ruling would be appropriate.

Accordingly, on May 12, 1994, Implant Innovations, Inc. ("3i"), submitted a brief requesting that we rule on the issue and produce findings of fact and conclusions of law to accompany our ruling. On the same day, Nobelpharma AB ("Nobelpharma") submitted its response. In June, 3i submitted its proposed findings and conclusions, and, again, Nobelpharma submitted its response. For the reasons discussed below, we deny 3i's (prompted) request for a ruling on inequitable conduct and, consequently, also deny its (prompted) request that we produce findings of fact and conclusions of law. Instead, pursuant to Fed.R.Civ.P. 58, we enter final judgment on the jury verdict in favor of 3i in the amount of $9,904,737.

I. Background

On July 23, 1991, Nobelpharma sued 3i, alleging infringement of U.S. Patent Number 4,330,891 ("the '891 patent"), which concerns a dental implant. 3i raised numerous affirmative defenses, including: (1) non-compliance with 35 U.S.C. § 101; (2) non-compliance with 35 U.S.C. § 102; (3) non-compliance with 35 U.S.C. § 103; (4) non-compliance with 35 U.S.C. § 112; (5) inequitable conduct; and (6) misuse. Further, 3i sought declaratory relief that the '891 patent was "invalid, void, ... not infringed, and ... not enforceable" for the reasons it raised in its affirmative defenses. Def.Am.Answer at ¶ 20. Further still, 3i counterclaimed, alleging that Nobelpharma violated antitrust laws.

On March 14, 1994, the case went to jury trial, which began with Nobelpharma's presentation of its infringement claim. At the close of Nobelpharma's case in chief, 3i moved pursuant to Fed.R.Civ.P. 50(a) for judgement as a matter of law on the issues of infringement and validity. On April 8 and 11, we granted 3i's motion. Immediately afterward, we proceeded with 3i's antitrust counterclaim. The jury returned a verdict in favor of 3i in the amount of $9,904,737.

II. Discussion

3i argues that, "pursuant to the Supreme Court's decision in Cardinal Chemical Co. v. Morton Int'l, Inc., ___ U.S. ___, 113 S.Ct. 1967, 124 L.Ed.2d 1 (1993), we should decide whether the '891 patent is unenforceable on grounds of inequitable conduct for important public policy reasons." Def.Br. at 1-2. Interpreting Cardinal, 3i states that "there is a valid and important public policy consideration in having all of the issues decided, including validity and unenforceability,

875 F. Supp. 483

even if the plaintiff has not proved infringement." Def.Br. at 5. Moreover, "the same public policy considerations apply here in the sense that the Federal circuit should review the entire case." Def.Br. at 5-6

Nobelpharma responds that Cardinal "provides no suggestion that there are important public policy reasons for determining that an invalid patent is unenforceable on the grounds of inequitable conduct." Pl.Br. at 4, n. 2. "The benefits recognized by the Supreme Court in Cardinal for preserving an invalidity determination when there is no infringement are not present here where the patent has been held invalid and the inequitable conduct issue is unresolved." Id.

In Cardinal, the Court considered the Federal Circuit's "routine" "practice" of "vacating declaratory judgments regarding patent validity following a determination of noninfringement." ___ U.S. at ___, 113 S.Ct. at 1971. After finding that the "Federal Circuit's practice was ... neither compelled...