Tyco Healthcare Grp., LP v. C.R. Bard, Inc.
| Decision Date | 29 April 2011 |
| Docket Number | Civ. No. 09–264–SLR. |
| Citation | 818 F.Supp.2d 777,2011 Markman 1626539 |
| Parties | TYCO HEALTHCARE GROUP, LP, Plaintiff, v. C.R. BARD, INC., and Davol, Inc., Defendants. |
| Court | U.S. District Court — District of Delaware |
OPINION TEXT STARTS HERE
Richard D. Kirk, Esquire and Stephen B. Brauerman, Esquire of Bayard, P.A., Wilmington, DE, for Plaintiff. Of Counsel: Fred H. Bartlit, Jr., Esquire, Sean C. Grimsley, Esquire and Bryan W. Leach, Esquire of Bartlit Beck Herman Palenchar & Scott LLP, Denver, CO; Mark L. Levine, Esquire of Bartlit Beck Herman Palenchar & Scott LLP, Chicago, IL.
Jack B. Blumenfeld, Esquire and Maryellen Noreika, Esquire of Morris, Nichols, Arsht & Tunnell LLP, Wilmington, DE, for Defendants. Of Counsel: Matthew D. Powers, Esquire and Jared Bobrow, Esquire of Weil, Gotshal & Manges LLP, Redwood Shores, California; Timothy E. DeMasi, Esquire, Corinne E. Atton, Esquire and Erin Wiggins, Esquire of Weil, Gotshal & Manges LLP, New York, NY.
AMENDED MEMORANDUM OPINION
Plaintiff Tyco Healthcare Group LP (“plaintiff”) filed its complaint against C.R. Bard, Inc. and Davol, Inc. (collectively, “defendants”) on April 21, 2009 alleging infringement of plaintiffs U.S. Patent No. 6,562,051 (“the '051 patent”). (D.I. 1) Defendants raised defenses of noninfringement, invalidity, failure to mark, obviousness-type double patenting, prosecution laches, prosecution history estoppel, and inequitable conduct. (D.I. 24) Defendants subsequently brought an unopposed motion for leave to amend and, on February 2, 2010, entered a counterclaim for false marking as defined under 35 U.S.C. § 292. (D.I. 50) Plaintiff moved to dismiss the counterclaim on the basis that defendants did not set forth sufficient allegations to support their false marking claim pursuant to Federal Rule of Civil Procedure 9(b). (D.I. 62) Plaintiffs amended their complaint, and defendants repleaded their false marking counterclaim. (D.I. 115, 143) At plaintiff's request, the court terminated plaintiffs motion to dismiss the superceded pleading. (D.I. 146) Plaintiff thereafter filed another motion to dismiss the counterclaim, this time attacking the court's subject matter jurisdiction over the claim. (D.I. 157) Discovery is now closed. (D.I. 153) On November 22, 2010, the court denied plaintiff's motion to dismiss. (D.I. 257) Currently before the court are several motions for summary judgment: (1) plaintiff's motion for partial summary judgment regarding defendants' obviousness-type double patenting defense (D.I. 186); (2) defendants' motion for partial summary judgment on their false marking counterclaim (D.I. 188); (3) defendants' motion for summary judgment of invalidity of the '051 patent for inadequate written description (D.I. 190); and (4) defendants' motion for summary judgment of noninfringement (D.I. 193). Also pending before the court are plaintiffs motions to bifurcate the counterclaim (D.I. 158) and to strike portions of defendants' expert's report (D.I. 183). Defendants also move to amend the joint claim construction chart to add an additional disputed limitation. (D.I. 185) The court has jurisdiction over these matters pursuant to 28 U.S.C. § 1338.
II. BACKGROUND
This case involves surgical fasteners used in medical procedures, commonly in the repair of hernias, or protrusions of an organ or bodily tissue through the wall of the cavity that normally contains it. Surgical fasteners may be used during a hernia repair to affix a surgical mesh to the affected tissue. A variety of surgical fastening means have been used by surgeons in hernia repair, such as sutures and staples. The present litigation concerns “tacker”–type fasteners, explained in more detail below.
The '051 patent, entitled “Surgical Helical Fastener with Applicator,” describes a helical fastener having a high retentive surface area with a first end (for enhancing penetration into tissue) and a second end comprising a coil (for receiving longitudinal and rotational forces). Preferably, the surgical fasteners are formed into the configuration of a continuous helical coil or a double continuous helical coil that is longitudinally collapsible and expandable and which can take on different configurations depending on the surgical application. (Col. 2:53–col. 3:14) A coil-shaped fastener according to the invention is pictured in figure 1, as follows.
An applicator is also described for delivering the fastener into body tissue. An applicator of the invention is exemplified in figure 5, as follows.
The applicator has a proximal portion (28) having a handle (30) and actuator (32). (Col. 3:21–22, col. 7:65–67) It also has an elongate distal portion (34) for housing fasteners, comprising an outer tube (36) housing an inner rotator (38), a lock clip/indicator (40) and a load spring (42). (Col. 3:19–21, col. 8:7–9) Preferably, a thread form (201) comprising an interlock spring is provided within the outer tube of the distal end, as pictured in fig. 7, below.
This thread form “functions to engage the coils of the helical fasteners and when rotating the rotator, a fastener is driven from the distal end of the applicator” into the tissue. (Col. 3:29–35, col. 8:54–56)
Claim 1 of the '051 patent, the only independent claim, reads as follows:
1. A system for controllably discharging fasteners from an applicator, comprising:
a plurality of fasteners, said fasteners having a helical configuration;
an applicator for attaching said fasteners to tissue, said applicator including a proximal portion, a distal portion and an actuator assembly;
said distal portion having an elongate outer tube, a connecting end and a terminal end;
a proximal portion having a handle, said proximal portion attached to said connecting end of said distal portion; and
said actuator assembly including a lever and configured to controllably discharge one of said plurality of fasteners from said distal portion upon complete depression of said lever and to prohibit backstroking of said lever where said lever is partially depressed.
In describing the claimed invention, the inventors 1 contrasted prior art fasteners requiring deformation to hold tissue, necessitating a complex applicator system, lacking a high relative surface area for holding tissue, or requiring access to tissue from two directions. (Col. 5:65–col. 6:2; col. 2:30–35) The inventors purported to provide a superior means for attachment of fasteners to tissue than provided by these prior art systems. (Col. 6:5–7)
III. STANDARD OF REVIEW
A court shall grant summary judgment only 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 moving party bears the burden of proving that no genuine issue of material fact exists. See Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586 n. 10, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986). “Facts that could alter the outcome are ‘material,’ and disputes are ‘genuine’ if evidence exists from which a rational person could conclude that the position of the person with the burden of proof on the disputed issue is correct.” Horowitz v. Fed. Kemper Life Assurance Co., 57 F.3d 300, 302 n. 1 (3d Cir.1995) (internal citations omitted). If the moving party has demonstrated an absence of material fact, the nonmoving party then “must come forward with ‘specific facts showing that there is a genuine issue for trial.’ ” Matsushita, 475 U.S. at 587, 106 S.Ct. 1348 (quoting Fed.R.Civ.P. 56(e)). The court will “view the underlying facts and all reasonable inferences therefrom in the light most favorable to the party opposing the motion.” Pa. Coal Ass'n v. Babbitt, 63 F.3d 231, 236 (3d Cir.1995). The mere existence of some evidence in support of the nonmoving party, however, will not be sufficient for denial of a motion for summary judgment; there must be enough evidence to enable a jury reasonably to find for the nonmoving party on that issue. See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 249, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). If the nonmoving party fails to make a sufficient showing on an essential element of its case with respect to which it has the burden of proof, the moving party is entitled to judgment as a matter of law. See Celotex Corp. v. Catrett, 477 U.S. 317, 322, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986).
IV. DISCUSSION
A brief survey of the patent ownership and prosecution will facilitate the court's disposition of the motions at bar.
The inventors of the '051 patent worked for Origin Medisystems, Inc. (“Origin”), to which they executed an assignment of rights in their inventions in October 1994. (D.I. 187, ex. 1) In December 1999, Origin assigned certain patent rights to Sherwood Services AG (“Sherwood”), a Swiss corporation, the assignee listed on the face of the '051 patent. ( Id., ex. 2) Sherwood later changed its name to Covidien AG. ( Id., ex. 3) In December 2008, Covidien AG merged into Tyco Healthcare Group AG, also a Swiss company, and was dissolved. The resulting company was named Tyco Healthcare Group AG after the completion of the merger. ( Id.) The '051 patent was assigned to plaintiff on April 17, 2009. ( Id.) The present suit was filed April 21, 2009. Other patents, such as U.S. Patent No. 5,582,616 (“the '616 patent”) and U.S. Patent No. 5,824,008 (“the '008 patent”), issuing from a division of the '616 patent in 1998, were assigned to plaintiff in March 2010. ( Id., ex. 4)
The '051 patent was filed as U.S. Patent Application No. 09/968,100 (“the '100 application”) on October 1, 2001. The '100 application is a continuation...
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