Therasense, Inc. v. Becton, Dickinson and Co.
| Decision Date | 03 April 2008 |
| Docket Number | Case No. C04-03732 MJJ.,Case No. C05-03117 MJJ.,Case No. C04-03327 MJJ.,No. C04-02123 MJJ.,C04-02123 MJJ. |
| Citation | 560 F.Supp.2d 835 |
| Court | U.S. District Court — Northern District of California |
| Parties | THERASENSE, INC., Plaintiff, v. BECTON, DICKINSON AND COMPANY, Defendant. |
Jeffrey I. Weinberger, Ted G. Dane, Esq., Munger Tolles & Olson LLP, Los Angeles, CA, for Plaintiff.
Before the Court are five summary judgment motions brought by the Defendants (Bayer, Roche, and BD/Nova) in these related patent infringement actions. The motions include three non-infringement motions:
(1) a motion for summary judgment of noninfringement brought by Bayer with respect to the '551 patent;
(2) a motion for partial summary judgment of noninfringement brought by Roche with respect to the '745 patent; and
(3) a motion for summary judgment of noninfringement brought by BD/ Nova with respect to the '164, '551, and '745 patents.
The other two motions address invalidity issues. They are:
(4) a motion for summary judgment of invalidity brought by BD/Nova with respect to the '890 patent; and
(5) a motion for summary judgment of invalidity brought by all Defendants with respect to the '745 patent.1
Plaintiff Abbott opposes all of the relief sought by these motions. The motions have been fully briefed by the parties, and have been the subject of extensive oral argument.2
Having carefully considered the evidence and argument submitted by the parties,3 the Court rules as set forth below.
The four related lawsuits that gave rise to the summary judgment motions before the Court concern four United States patents owned by Abbott Diabetes Care Inc. and Abbott Laboratories (collectively "Abbott"): U.S. Patent Nos. 5,628,890, 5,820,551, 6,143,164, and 6,592,745. In the lawsuits, Abbott has asserted that blood-glucose test strips marketed and manufactured by the Defendants infringe one or more of the Abbott patents.
In Case Nos. 04-2123, 04-3327, and 04-3732, Abbott contends that Defendants Becton, Dickinson and Co. ("BD") and Nova Biomedical Corporation ("Nova") (collectively "BD/Nova") wilfully infringe the four Abbott patents-in-suit, entitling Abbott to damages and injunctive relief. BD/Nova alleges it does not infringe the Abbott patents and that the Abbott patents are invalid, thereby entitling BD/ Nova to declaratory judgments of noninfringement and patent invalidity.
In Case No. 05-3117, Abbott contends that Defendants Roche Diagnostics Corporation ("Roche") and Bayer Healthcare LLC ("Bayer") wilfully infringe the '551 and '745 patents, entitling Abbott to damages and injunctive relief. Roche and Bayer each allege that they do not infringement the Abbott patents and that the Abbott patents are invalid, thereby entitling Roche and Bayer to declaratory judgments of non-infringement and patent invalidity.
The Court has previously construed several disputed claim terms in coordinated claim construction proceedings. In a claim construction order dated August 31, 2006, the Court construed several terms of the '890 and '164 patents. In a claim construction order dated April 27, 2007, the Court construed several disputed terms of the '551 and '745 patents.
I. Summary Judgment.
Federal Rule of Civil Procedure 56(c) authorizes summary judgment if there is no genuine issue as to any material fact and the moving party is entitled to judgment as a matter of law. See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247-48, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). The moving party bears the initial burden of demonstrating the basis for the motion and identifying the portions of the pleadings, depositions, answers to interrogatories, affidavits, and admissions on file that establish the absence of a triable issue of material fact. Celotex Corp. v. Catrett, 477 U.S. 317, 323, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). If the moving party meets this initial burden, the burden then shifts to the non-moving party to present specific facts showing that there is a genuine issue for trial. Fed.R.Civ.P. 56(e); Celotex, 477 U.S. at 324, 106 S.Ct. 2548; Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586-87, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986). The non-movant's bare assertions, standing alone, are insufficient to create a material issue of fact and defeat a motion for summary judgment. Anderson, 477 U.S. at 247-48, 106 S.Ct. 2505. An issue of fact is material if, under the substantive law of the case, resolution of the factual dispute might affect the case's outcome. Id. at 248, 106 S.Ct. 2505. Factual disputes are genuine if they "properly can be resolved in favor of either party." Id. at 250, 106 S.Ct. 2505. Thus, a genuine issue for trial exists if the nonmovant presents evidence from which a reasonable jury, viewing the evidence in the light most favorable to that party, could resolve the material issue in its favor. Id. However, "[i]f the [non-movant's] evidence is merely colorable, or is not significantly probative, summary judgment may be granted." Id. at 249-50, 106 S.Ct. 2505 (internal citations omitted).
To determine infringement, the asserted claim must be compared to the allegedly infringing method or device. Markman v. Westview Instruments, Inc., 52 F.3d 967, 976 (Fed.Cir.1995). To establish literal infringement, every claim limitation, or claim element, must be found in the accused subject matter. Warner-Jenkinson Co. v. Hilton Davis Chemical Co., 520 U.S. 17, 29, 40, 117 S.Ct. 1040, 137 L.Ed.2d 146 (1997). Thus, establishing that the accused method or device does not satisfy one claim limitation would support a finding of noninfringement. Id. The patentee must prove infringement by a preponderance of the evidence. Bayer AG v. Elan Pharm. Research Corp., 212 F.3d 1241, 1247 (Fed.Cir.2000). Under the doctrine of equivalents, a product that does not literally infringe a patent claim may still infringe if each and every limitation of the claim is literally or equivalently present in the accused device. See Warner-Jenkinson, 520 U.S. at 40, 117 S.Ct. 1040. Whether an element of an accused product infringes under the doctrine of equivalents depends in part on whether that component performs substantially the same function as the claimed limitation in substantially the same way to achieve substantially the same result. See Ethicon Endo-Surgery, Inc. v. United States Surgical Corp., 149 F.3d 1309, 1315 (Fed.Cir. 1998); Pennwalt Corp. v. Durand-Wayland Inc., 833 F.2d 931, 934-35 (Fed.Cir. 1987) (en banc). If the differences between a claim and an accused device are "insubstantial" to one with ordinary skill in the art, the product may infringe under the doctrine of equivalents. See Ethicon, 149 F.3d at 1315; Sage Prods., Inc. v. Devon Indus., Inc., 126 F.3d 1420, 1423 (Fed.Cir.1997). The doctrine prevents an accused infringer from avoiding infringement by changing minor details of a claimed invention while retaining its essential functionality. See Sage, 126 F.3d at 1424.
A patent claim is presumed valid. 35 U.S.C. § 282. The burden is on the party challenging the patent to show, by clear and convincing evidence, that the patent claim is invalid. See Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367 (Fed.Cir.1986); Invitrogen Corp. v. Clontech Laboratories, Inc., 429 F.3d 1052, 1063 (Fed.Cir.2005).
Bayer seeks summary judgment of noninfringement with respect to the '551 patent for its two accused two products, the Microfill and Autodisc strips. Plaintiffs have accused these two products of infringing claims 1-4 of the '551 patent. Bayer contends that these products do not infringe the asserted '551 claims for two independent reasons: (1) the Bayer products do not contain a "reference electrode", and (2) the Bayer products do not contain electrodes that are in electrical contact with each other.
All of the '551 claims asserted against Bayer cover a device that has a "reference counterelectrode."4 In its April 27, 2007 claim construction order, the Court construed "reference electrode" to mean:
an electrode that (1) is used to complete an electrical circuit with the active electrode during the glucose measurement; (2) is positioned or connected in such a way that electricity can flow between the second conductor and the electrode; (3) has a known potential relative to a standard; and (4) maintains its potential with only insignificant variation during the measurement.
Bayer contends that the undisputed evidence establishes that the counterelectrodes contained in its two accused products do not have a known potential relative to a standard.
The testimony of Bayer's expert, Dr. Stetter, is uncontradicted that the potential of the counterelectrodes in the accused Bayer products varies significantly depending on the concentration of glucose in the sample. (Stetter Decl., ¶¶ 18-25.) Because the purpose of the accused devices is to measure the glucose level in blood, this means that the exact potential of the counterelectrodes is not known before measurement.
In its effort to prove that the potential of the counterelectrodes is nonetheless "known ... relative to a standard", Bayer relies exclusively on the testimony of its expert, Jay Johnson.5 Dr. Johnson's testimony describes experiments in which the potential of the counterelectrodes was calculated based on assumptions about the real-world circumstances in which the accused products would be used, and those calculations were then compared with experimentally measured potentials. (Johnson Decl., ¶¶ 44-50.) However, Abbott and Dr. Johnson do not...
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