Regents of University of Cal. v. Micro Therapeutic
| Decision Date | 21 August 2007 |
| Docket Number | No. C 03-05669 JW.,C 03-05669 JW. |
| Citation | 507 F.Supp.2d 1074 |
| Court | U.S. District Court — Northern District of California |
| Parties | The REGENTS OF the UNIVERSITY OF CALIFORNIA, Plaintiff, v. MICRO THERAPEUTICS, INC. and Dendron GmbH, Defendants and Third Party Plaintiffs, v. Boston Scientific Corp. and Target Therapeutics, Inc., Third Party Defendants. |
Charles Furlonge Robinson, James E. Hoist, P. Martin Simpson, Rita A. Hao, University of California, Oakland, CA, Lynn Harold Pasahow, Patrick Eugene Premo, Carolyn Chang, Chien-Ju Alice Chuang, Henry Zuzueta Carbajal, III, Wendy Lynn Bjerknes, Fenwick & West LLP, Mt. View, CA, Michael Jeffrey Shuster, Fenwick & West LLP, San Francisco, CA, for Plaintiff.
Charles G. Curtis, Jr., David J. Harth, Gabrielle E. Bina, Lissa Rose Koop, Michelle M. Umberger, Sarah C. Walkenhorst, Autumn Noelle Nero, John S. Skilton, Heller Ehrman LLP, David Edwin Jones, David L. Anstaett, Madison, WI, Colin G. Sandercock, Proskauer Rose LLP, Washington, DC, Michael Kenneth Plimack, Heller, Ehrman, LLP, San Francisco, CA, for Defendants and Third Party Plaintiffs.
AUGUST 21, 2007 ORDER GRANTING IN PART AND DENYING IN PART DEFENDANTS' CROSS-MOTION FOR PARTIAL SUMMARY JUDGMENT OF NON-INFRINGEMENT
Plaintiff The Regents of the University of California ("The Regents" or "Plaintiff") brings this action against Defendants Micro Therapeutics Inc. ("MTI") and its wholly owned subsidiary Dendron GmbH (collectively, "Defendants") for infringement of twelve of The Regents' patents which relate to devices for occluding vascular cavities for the treatment of brain aneurysms.
Presently before the Court are: (1) Plaintiffs Motion for Partial Summary Judgment of Infringement of Claim 4 of the '136 Patent and Claims 11, 12, 13 and 16 of the '578 Patent and for Partial Summary Adjudication of Infringement of All Patents-in-Suit; (2) Defendants' Opposition to Plaintiffs Partial Summary Judgment Motion and Cross-Motion for Partial Summary Judgment of Non-Infringement.1 The Court conducted a hearing on June 27, 2007. The parties have asserted several grounds for finding infringement or non-infringement. This Order addresses Defendants' cross-motion for partial summary judgment of non-infringement on the ground that the accused products do not meet the elements of enumerated claims. Based on the papers submitted to date and oral arguments of counsel, the Court GRANTS in part and DENIES in part Defendants' cross-motion for partial summary judgment.
The standard for summary judgment does not change in a patent case. Conroy v. Reebok Int'l, Ltd., 14 F.3d 1570, 1575 (Fed.Cir.1994).
Although motions for partial summary judgment are common, Rule 56 of the Federal Rules of Civil Procedure, which governs summary judgment, does not contain an explicit procedure entitled "partial summary judgment." As with a motion under Rule 56(c), partial 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). The purpose of partial summary judgment "is to isolate and dispose of factually unsupported claims or defenses." Celotex v. Catrett, 477 U.S. 317, 323-24, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). The moving party "always bears the initial responsibility of informing the district court of the basis for its motion, and identifying the evidence which it believes demonstrates the absence of a genuine issue of material fact." Id. at 323, 106 S.Ct. 2548. The non-moving party must then identify specific facts "that might affect the outcome of the suit under the governing law," thus establishing that there is a genuine issue for trial. Fed. R.Civ.P. 56(e).
When evaluating a motion for partial or full summary judgment, the court views the evidence through the prism of the evidentiary standard of proof that would pertain at trial. Anderson v. Liberty Lobby Inc., 477 U.S. 242, 255, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). The court draws all reasonable inferences in favor of the nonmoving party, including questions of credibility and of the weight that particular evidence is accorded. See, e.g. Masson v. New Yorker Magazine, Inc., 501 U.S. 496, 520, 111 S.Ct. 2419, 115 L.Ed.2d 447 (1991). The court determines whether the non-moving party's "specific facts," coupled with disputed background or contextual facts, are such that a reasonable jury might return a verdict for the non-moving party. T.W. Elec. Serv., 809 F.2d at 631. In such a case, partial summary judgment is inappropriate. Anderson, 477 U.S. at 248, 106 S.Ct. 2505. However, where a rational trier of fact could not find for the nonmoving party based on the record as a whole, there is no "genuine issue for trial." Matsushita Elec. Indus. Co. v. Zenith Radio, 475 U.S. 574, 587, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986)
The filing of cross-motions for partial summary judgment or summary judgment does not necessarily mean that the material facts are, indeed, undisputed. The denial of one motion does not necessarily require the grant of another. See Atlantic Richfield Co. v. Farm Credit Bank of Wichita, 226 F.3d 1138, 1147 (10th Cir.2000). The motions must be evaluated in accordance with the claim or defense which is the subject of the motion and in accordance with the burden of proof allocated to each party.
To establish infringement, every limitation in a claim as construed by the court must be in the accused product, either exactly or by substantial equivalent. Carroll Touch, Inc. v. Electro Mechanical Syst., 15 F.3d 1573, 1576 (Fed.Cir.1993). A claim is literally infringed if the accused product is exactly the same as each element of the asserted claim. Hi-Life Products, Inc. v. American Nat'l Water-Mattress Corp., 842 F.2d 323, 325 (Fed.Cir. 1988). Even if a product does not literally infringe it may infringe under the doctrine of equivalents. Warner-Jenkinson Co. v. Hilton Davis Chemical Co., 520 U.S. 17, 117 S.Ct. 1040, 137 L.Ed.2d 146 (1997). Infringement under the doctrine of equivalents infringement is found where the accused product does not literally correspond to the asserted claim but does function in the same way and obtain the same result as the asserted claim. Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 70 S.Ct. 854, 94 L.Ed. 1097 (1950).
"A determination of infringement requires a two-step analysis." Terlep v. Brinkmann Corp., 418 F.3d 1379, 1381 (Fed.Cir.2005). First, the claim must be construed; second, the claim must be compared to the "accused device or process." Id. (citing Carroll Touch, Inc. v. Electro Mech. Sys., Inc., 15 F.3d 1573, 1576 (Fed. Cir.1993)). While claim construction is an issue of law, infringement is a question of fact. Id. (citing Markman v. Westview Instruments, Inc., 52 F.3d 967, 970-71 (Fed.Cir.1995)).
The moving party bears the burden of proving infringement or non-infringement by a preponderance of the evidence. Mannesmann Demag Corp. v. Engineered Metal Products, Inc., 793 F.2d 1279, 1282 (Fed.Cir.1986).
Defendants move for partial summary judgment on the ground that, under a stipulated claim definition, certain of its products do not infringe the enumerated patents for two reasons. First, the same products are also accused of infringing other patents in the family which recite as an element that the coils must be "pliable" or "flexible." Defendants contend that under the stipulated definitions, a coil cannot be both "pliable" and "substantially pliable." Second, Defendants contend that under the stipulated definitions, there are no material facts to support a claim that the coils meet the "substantially flexible" limitation, and hence, judgment should be granted eliminating those coils from those claims. (Defendants' Motion at 12-14.)
Defendants' contentions highlight a dispute between the parties over the stipulated definitions. Defendants contend that Plaintiff is attempting to renege on the stipulation. (Defendants' Motion at 13.) Accordingly, the Court first must decide whether the parties stipulated to constructions of several phrases in the patents-in-suit, and if so, whether to apply or reject those constructions.
Defendants contend that two years ago, Plaintiff and Defendants agreed to definitions of "substantially pliable and flexible" as "largely but not wholly pliable" and "largely but not wholly flexible." (Defendants' Motion at 12.) Defendants cite as proof of the stipulation Exhibit 20 at 5 of the "Declaration of Henry Z. Carbajal III in Support of Plaintiffs Motion for Summary Judgment of Infringement of Claim 4 of U.S. Patent No. 5,122,136 and Claims 11, 12, 13 and 16 of U.S. Patent No. 5,855,578; and Motion for Partial Summary Adjudication of Infringement on all Patents-in-Suit." (See Docket Item No. 620.) However, the subject phrases are not on page 5 of the referenced declaration and exhibit.
Instead, the stipulated definitions are in the parties' Joint Claim Construction and Prehearing Statement for Supplemental Claim Construction Hearing dated August 2, 2006. (See Ex. B, Part 1 of 2 at 5, Docket Item No. 353,) The chart is entitled, "Exhibit B: Amended Agreed Upon Construction in Joint Claim Construction" and provides, in relevant part, as follows:
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U.S. Patent No. 5,122,136 Terms, Phrases
Claim Element or Clauses2 Construction Agreed Upon by Parties
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segment and is comprised of a substantially largely but not wholly
mental (sic) not susceptible
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