Princeton Biochemicals v. Beckman Coulter

• Decision Date: 09 June 2005
• Docket Number: No. 04-1493.,04-1493.
• Citation: 411 F.3d 1332
• Parties: PRINCETON BIOCHEMICALS, INC., Plaintiff-Appellant, v. BECKMAN COULTER, INC., Defendant-Appellee.
• Court: U.S. Court of Appeals — Federal Circuit

411 F.3d 1332

PRINCETON BIOCHEMICALS, INC., Plaintiff-Appellant, v. BECKMAN COULTER, INC., Defendant-Appellee.

No. 04-1493.

United States Court of Appeals, Federal Circuit.

DECIDED: June 9, 2005.

William G. Todd, Greenberg Traurig, LLP, New York, New York, argued for plaintiff-appellant. With him on the brief was Scott J. Bornstein.

Joseph R. Re, Knobbe, Martens, Olson & Bear, LLP, Irvine, California, argued for defendant-appellee. With him on the brief were Darrell L. Olson, Douglas G. Muehlhauser, and Christy G. Lea.

Before RADER, SCHALL, and GAJARSA, Circuit Judges.

RADER, Circuit Judge.

In the United States District Court for the District of New Jersey, a jury found in favor of Plaintiff-Appellant Princeton Biochemicals, Inc. (Princeton), rejecting the claims of Defendant-Appellee Beckman Coulter, Inc. (Beckman) that Princeton's U.S. Patent No. 5,045,172 (the '172 patent) is invalid by reason of obviousness and prior invention, and finding that Beckman infringed the '172 patent. On all three questions, however, the district court found the jury's verdict unsupported by substantial evidence and granted judgment as a matter of law (JMOL) in favor of Beckman. Princeton Biochemicals, Inc. v. Beckman Coulter, Inc., No. 96-5541(MLC), 2004 WL 1398227 (D.N.J. June 17, 2004). Because the district court properly concluded that substantial evidence did not support the jury's verdict of nonobviousness, this court affirms.

I.

Dr. Norberto Guzman is the inventor of the '172 patent, which he assigned to Princeton. The '172 patent claims a capillary electrophoresis device. Electrophoresis is one method available for the investigation of biological materials, and is an efficient procedure for the separation and detection of proteins and other matter. '172 patent, col. 1, ll. 16-20. Electrophoretic separation, one species of electrophoresis, relies on the differential speeds of the migration of differently charged particles in an electric field. Id. at col. 1, ll. 21-23. Capillary electrophoresis is one type of electrophoretic separation. Id. at col. 1, ll. 17-20. As the '172 patent describes,

[I]t is generally known that a material, containing mixtures of substances to be analyzed, can be passed along a capillary tube and through a detector under the influence of an applied voltage. The applied voltage charges the substances and the charges on the substances determine their spacing and their speed of passage along the capillary tube.

Id. at col. 2, ll. 32-38. Capillary tubes, generally made of quartz, range in lengths of roughly 10 to 100 centimeters and 25-200 microns in diameter. Id. at col. 1, ll. 50-58. Due to the dimensions of a tube, capillary electrophoresis requires only a minute sample size to efficiently separate and identify the components of a solution.

Claim 32 of the '172 patent claims a specific capillary electrophoresis device:

Capillary electrophoresis apparatus comprising a capillary tube of the type which can be electrically charged, said capillary tube having first and second ends,

first means at said first end of said capillary tube providing a source of buffer solution and a source of a sample substance to be analyzed,

second means coupled to said apparatus for applying electrical potential across said capillary tube whereby a sample flows through said capillary tube and past said detector,

said first means includes a rotatable table carrying a plurality of sample cups and a holder for holding an end of said capillary tube in operative relation with one of the said cups, said cups containing either buffer solution or a sample to be analyzed, and

said capillary tube is in the form of a coil of glass tubing [secured to a support member].^*

Id. at col. 23, ll. 30-47 (emphases added). The parties stipulated that claim 32 contains eight elements, as follows:

Capillary electrophoresis apparatus comprising:

(1) a capillary tube of the type which can be electrically charged,

(2) said capillary tube having first and second ends,

(3) first means at said first end of said capillary tube providing a source of buffer solution and a source of sample substance to be analyzed (4) second means coupled to said apparatus for applying electrical potential across said capillary tube whereby a sample flows through said capillary tube and past said detector,

(5) said first means includes a rotatable table carrying a plurality of sample cups and

(6) a holder for holding an end of said capillary tube in operative relation with one of the said cups, said cups containing either buffer solution or a sample to be analyzed, and

(7) said capillary tube is in the form of a coil of glass tubing

(8) secured to a support member.

Id.

Beckman manufactures and sells the P/ACE 2000 and 5000 Series capillary electrophoresis devices ("the accused devices" or "the P/ACE devices"). Beckman contends a prototype device, named OTEP II, contained all the elements recited in claim 32. Princeton does not contest that Beckman made OTEP II by February 1, 1987. That date, therefore, is the relevant reduction-to-practice date for the P/ACE devices. Beckman began selling P/ACE devices as early as 1993.

Guzman filed the application for the '172 patent on November 14, 1988. Thus, the critical date for evaluating 35 U.S.C. § 102(b) prior art references is November 14, 1987. Several references, published before November 14, 1987, discussed the electrophoretic concepts embodied in claim 32 of the '172 patent. Two particular references stand out. The first, an article by Honda dated September 1987, describes ways to introduce automatically different samples into a capillary electrophoresis device. Susumu Honda, et. al., "Evaluation of an Automatic Siphonic Sampler for Capillary Zone Electrophoresis," Int'l J. on Chromatography, Electrophoresis and Related Methods. The second, a Ph.D. thesis by Lukacs, was published in 1983 by a graduate student of Dr. James W. Jorgenson, an expert who testified on behalf of Beckman. The Lukacs thesis discloses the coiling of capillary tubes during electrophoretic work. Coiling a capillary tube lengthens the tubing without increasing the size of the electrophoretic device. A longer tube provides better separation and identification of analytes.

On November 21, 1996, Princeton filed suit, alleging that the P/ACE devices infringed claim 32 of the '172 patent. Beckman denied infringement and sought a declaration of invalidity on grounds of obviousness and prior invention. Following a grant of summary judgment of noninfringement, Princeton appealed. In an unpublished opinion, this court reversed, holding that the district court had improperly construed the sixth element in claim 32. Princeton Biochemicals, Inc. v. Beckman Instruments, Inc., 1999 WL 641233, at *6 (Fed.Cir.1999) ("The proper interpretation of the holder limitation is that `in operative relation' encompasses both vertical movement of the holder as well as vertical movement of the sample cups and the table.").

On remand, the district court conducted a nine-day trial followed by motions for JMOL from both parties. The district court reserved judgment until after the jury verdict. The jury decided in favor of Princeton on all issues. Specifically, the jury found that Princeton proved by a preponderance of the evidence that Beckman's devices infringed claim 32 of the '172 patent; that Beckman did not prove by clear and convincing evidence that claim 32 of the patent was invalid for obviousness; and finally, that Beckman did not prove "by clear and convincing evidence that claim 32 is invalid because the invention described in that claim was made by Beckman before it was made by Princeton." Beckman timely renewed its JMOL motion and moved alternatively for a new trial.

In due course, the district court issued a carefully composed, 194-page opinion that set aside the jury's verdict and found all counts in favor of Beckman. Princeton Biochemicals, Inc., 2004 WL 1398227. The district court also granted Beckman's motion for a new trial. Id. at *91. Princeton timely appealed to this court. This court has jurisdiction under 28 U.S.C. § 1295(a)(1).

II.

"The grant or denial of a motion for judgment as a matter of law is a procedural issue not unique to patent law, reviewed under the law of the regional circuit in which the appeal from the district court would usually lie." Summit Tech., Inc. v. Nidek Co., 363 F.3d 1219, 1223 (Fed.Cir.2004). Under the law of the Third Circuit, review of a district court's ruling on JMOL is plenary. Shellenberger v. Summit Bancorp, Inc., 318 F.3d 183, 186 (3rd Cir.2003). The party requesting the JMOL must show that substantial evidence did not support the jury's findings, where substantial evidence is "such relevant evidence from the record taken as a whole as might be accepted by a reasonable mind as adequate to support the finding under review." Tex. Instruments Inc. v. Cypress Semiconductor Corp., 90 F.3d 1558, 1563 (Fed.Cir.1996). This court must also consider all the evidence before the jury and draw all reasonable inferences in favor of the prevailing party on that issue, i.e., the non-movant. Richardson-Vicks Inc. v. Upjohn Co., 122 F.3d 1476, 1479 (Fed.Cir.1997). Regarding the obviousness issue in this case, this court must determine whether the jury had substantial evidence upon which to conclude that Beckman met its burden of showing invalidity by clear and convincing evidence.

This court also reviews the legal standards that the jury applied in reaching its verdict to determine whether they were correct as a matter of law. Herbert Markman, Positek, Inc. v. Westview Instruments, Inc., 52 F.3d 967, 975 (Fed.Cir.1995) (en banc), aff'd, 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996). When reviewing a jury's verdict on obviousness the court reviews the "conclusions on obviousness, a question of law, without deference, and the underlying findings of fact, whether explicit or implicit within the...