Siemens Medical Solutions v. Saint-Gobain Ceramics

• Decision Date: 15 May 2009
• Docket Number: Civ. No. 07-190-SLR.
• Citation: 615 F.Supp.2d 304
• Parties: SIEMENS MEDICAL SOLUTIONS USA, INC., Plaintiff, v. SAINT-GOBAIN CERAMICS & PLASTICS, INC., Defendant.
• Court: U.S. District Court — District of Delaware

Page 304

615 F.Supp.2d 304

SIEMENS MEDICAL SOLUTIONS USA, INC., Plaintiff, v. SAINT-GOBAIN CERAMICS & PLASTICS, INC., Defendant.

Civ. No. 07-190-SLR.

United States District Court, D. Delaware.

May 15, 2009.

COPYRIGHT MATERIAL OMITTED

Jack B. Blumenfeld, Maryellen Noreika, Morris, Nichols, Arsht & Tunnell LLP, Wilmington, DE, for Plaintiff. Kirkland & Ellis LLP, Washington, D.C. (Gregg F. LoCascio, Charanjit Brahma, Sean M. McEldowney, Michael A. Pearson, Jr., of counsel), for plaintiff.

Jesse A. Finkelstein, Jeffrey L. Moyer, Kelly E. Farnan, Richards, Layton & Finger, P.A., Wilmington, DE, Thelen Reid Brown Raysman & Steiner LLP, New York, NY (Frederick L. Whitmer, John C. Ohman, of counsel), for defendant.

MEMORANDUM OPINION

SUE L. ROBINSON, District Judge.

I. INTRODUCTION

Plaintiff Siemens Medical Solutions USA, Inc. ("plaintiff") filed this action against defendant Saint-Gobain Ceramics & Plastics, Inc. ("defendant") on April 3, 2007, alleging infringement of U.S. Patent No. 4,958,080 ("the '080 patent"). (D.I.1) Plaintiff is the exclusive licensee of the '080 patent; it is owned by Schlumberger Technology Corporation ("STC"). The '080 patent claims what has been described as a breakthrough in the field of medical imaging, that is, a gamma or x-ray detector that incorporates a particular scintillator.¹ This scintillator is crystalline, made of cerium-doped lutetium oxyorthosilicate ("LSO"). Plaintiff produces LSO scintillation crystals. Defendant manufactures lutetium-yttrium orthosilicate ("LYSO") scintillation crystals for use in medical scanners. Following a trial, on September 25, 2008, a jury found that defendant infringed the '080 patent and awarded $52.3 million in damages. (D.I. 196) Currently before the court are defendant's motion for judgment as a matter of law or for a new trial and remittitur (D.I. 202) and plaintiffs motion for prejudgment interest (D.I.203).

II. BACKGROUND

A. Technology and Patents at Issue

Positron emission tomography, also called "PET" imaging or a "PET" scan, is a type of nuclear medicine imaging. PET scanners create images by detecting gamma rays produced by a radioisotope after it is administered to a patient. Gamma rays are converted into photons of visible light by scintillator crystals. These photons can be measured with photodetectors, resulting in the generation of a three-dimentional image of the area of the patient's body being scanned.

The '080 patent, which describes LSO crystals, was filed on August 4, 1989. The '080 patent generally clams X-ray and gamma ray detectors that incorporate LSO crystals.² LSO crystals, as described by the '080 patent, were generally recognized as the next scintillation crystal generation technology. (D.I. 20, ex. 3 at col. 1, I. 65-col. 2, l.3; id., ex. 4 at col. 2, II. 28-44) As disclosed by the '080 patent, LSO crystals had improved scintillation properties, such as light output, energy resolution, scintillation decay time, and index of refraction, over prior art crystals. ('080 patent, col. 8, II. 29-42 & Table 5) The '080 patent expired on October 6, 2008.

In contrast to the LSO crystals of the '080 patent, which contain only lutetium, defendant's LYSO crystals represent a 10% (by mole) substitution of the element yttrium for lutetium ("10% Y LYSO" crystals). LYSO crystals are the subject of U.S. Patent No. 6,624,420 ("the '420 patent") to Chai et al.³ The '420 patent is assigned to the University of Central Florida and Crystal Photonics; Inc.; defendant's manufacture and sale of 10% Y LYSO crystals is licensed by the University. (D.I. 42 at ¶ 16) Defendant sells 10% Y LYSO crystals under the tradename Pre-Lude 420. Defendant's PreLude 420 crystals are incorporated into medical scanners manufactured by other companies. The "Gemini Raptor" and "Gemini TF"⁴— branded PET scanners sold by Philips, one of plaintiffs medical imaging competitors, utilize defendant's 10% Y LYSO crystals. (D.I. 19 at 4)

B. Prior Proceedings

At issue in this case was whether PET scanners incorporating 10% Y LYSO crystals meet the "scintillator"⁵ limitation of the asserted claims under the doctrine of equivalents. The parties did not dispute that PET scanners incorporating defendant's 10% Y LYSO crystals literally satisfy all of the remaining limitations of claims 1 and 2 of the '080 patent. With respect to the "scintillator" limitation, defendant conceded that its 10% Y LYSO crystals perform substantially the same function (detection of gamma and x-rays) as the scintillator limitation in the '080 claims, and emits protons when excited by the presence of either gamma or x-rays just as the claimed LSO crystals. The fulcrum issue, therefore, was whether defendant's 10% Y LYSO crystals represent a substantial difference over the claimed LSO crystals. Part of defendant's argument in this regard was that 10% Y LYSO crystals do not achieve substantially the same result as the scintillator limitation of the claims.⁶

A jury trial was held between September 17 and 25, 2008. Throughout the litigation, defendant asserted that it did not infringe (willfully or otherwise) the '080 patent under the doctrine of equivalents because it licenses LYSO crystals under the '420 patent. Defendant sought a jury instruction that the '420 patent was valid and unchallenged by plaintiff. Relying on Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 493 F.3d 1368 (Fed.Cir. 2007) (hereinafter "Festo"), defendant also sought a charge conveying that plaintiff's ability to demonstrate equivalency is "considerably more difficult," specifically, requiring that equivalence be shown by clear and convincing evidence. The court denied both requests during the course of the trial. Plaintiff's infringement evidence included documents wherein defendant's scientists used the term "equivalent" or "equal" in describing LSO and 10% Y LYSO crystals. Defendant attempted to distance itself from its documents by arguing that its employees did not intend these terms to convey any legal (rather than general) significance. Both parties' witnesses addressed the effects of 10% Y. For example, defendant's expert, Dr. McClellan, testified that 10% Y LYSO crystals display different optical properties than LSO crystals. Plaintiff admitted data showing a large similarity in scintillation properties and the testimony of its expert, Dr. Marvin Weber, who compared test results on both crystals and deemed them equivalent.

The jury was instructed that plaintiff must prove its contributory and inducement of infringement claims by a preponderance of the evidence. With respect to the '420 patent, the court further instructed:

[Y]ou have heard evidence that [defendant] has a license under the ['420] patent to produce its 10% Y LYSO crystals]. In connection with this evidence, I instruct you that a product that is covered by a subsequent patent may still infringe an earlier patent. Nonetheless, in considering the issue of infringement under the doctrine of equivalents, you may consider that [defendant] obtained the license under the ['420] patent, which may be some evidence that the differences between the 10% Y LYSO crystals] and the claimed LSO crystals] are substantial. Such evidence may be considered along with other evidence of the similarities and differences between the claimed LSO crystals] and [defendant's] 10% Y LYSO crystals]. It is for you to decide the issue of whether [defendant's] 10% Y LYSO crystals] constitute[] an equivalent to the claimed LSO crystals] of the '080 patent.

(D.I. 192 at 24) The jury ultimately found in favor of plaintiff on the issue of equivalence and awarded $52.3 million in lost profits damages for defendant's infringement. (D.I.196) However, the jury found that defendant's infringement was not willful. (Id.)

III. LEGAL STANDARDS

A. Motion for Judgment as a Matter of Law

To prevail on a renewed motion for judgment as a matter of law following a jury trial under Federal Rule of Civil Procedure 50(b), the moving party "`must show that the jury's findings, presumed or express, are not supported by substantial evidence or, if they were, that the legal conclusions implied [by] the jury's verdict cannot in law be supported by those findings.'" Pannu v. Iolab Corp., 155 F.3d 1344, 1348 (Fed.Cir.1998) (quoting Perkin-Elmer Corp. v. Computervision Corp., 732 F.2d 888, 893 (Fed.Cir.1984)). "`Substantial' evidence is such relevant evidence from the record taken as a whole as might be acceptable by a reasonable mind as adequate to support the finding under review." Perkin-Elmer Corp., 732 F.2d at 893. In assessing the sufficiency of the evidence, the court must give the nonmoving party, "as [the] verdict winner, the benefit of all logical inferences that could be drawn from the evidence presented, resolve all conflicts in the evidence in his favor, and in general, view the record in the light most favorable to him." Williamson v. Consol. Rail Corp., 926 F.2d 1344, 1348 (3d Cir.1991); Perkin-Elmer Corp., 732 F.2d at 893. The court may not determine the credibility of the witnesses nor "substitute its choice for that of the jury between conflicting elements of the evidence." Id. In summary, the court must determine whether the evidence reasonably supports the jury's verdict. See Dawn Equip. Co. v. Kentucky Farms Inc., 140 F.3d 1009, 1014 (Fed.Cir.1998).

B. Motion for a New Trial

The decision to grant or deny a new trial is within the sound discretion of the trial court and, unlike the standard for determining judgment as a matter of law, the court need not view the evidence in the light most favorable to the verdict winner. See Allied Chem. Corp. v. Daiflon, Inc., 449 U.S. 33, 36, 101 S.Ct. 188, 66 L.Ed.2d 193 (1980). Federal Rule of Civil Procedure 59(a) provides, in pertinent part:

A new trial may be granted to all or any of the parties and on all or part of the issues in an action in which there has been a trial by jury, for any of the reasons for which new trials...