U.S. Filter Corp. v. Ionics, Inc., CIV. A. 98-10541-REK.

• Decision Date: 08 October 1999
• Docket Number: No. CIV. A. 98-10541-REK.,CIV. A. 98-10541-REK.
• Parties: UNITED STATES FILTER CORPORATION, U.S. Filter/Ionpure, Inc., IP Holding Company, Millipore Corporation, and Millipore Investment Holdings Limited, Plaintiffs v. IONICS, INCORPORATED, Defendant
• Court: U.S. District Court — District of Massachusetts

68 F.Supp.2d 48

UNITED STATES FILTER CORPORATION, U.S. Filter/Ionpure, Inc., IP Holding Company, Millipore Corporation, and Millipore Investment Holdings Limited, Plaintiffs v. IONICS, INCORPORATED, Defendant

No. CIV. A. 98-10541-REK.

United States District Court, D. Massachusetts.

October 8, 1999.

Jerome P. Facher, William F. Lee, Wayne M. Kennard, Hale & Dorr, Mark Daniel Selwyn, Hale & Dorr, Boston, MA, Elizabeth Olivier, United States Filter Corporation, Assistant General Counsel, Palm Desert, CA, Christine A. Maglione, Dimitry S. Herman, Hale & Dorr, Beth E. Turetsky, Hale and Dorr, Boston, Wayne L. Stoner, Hale and Dorr LLP, Peter M. Dichiara, Hale and Dorr LLP, Boston, MA, for Plaintiffs.

Jeffrey R. Martin, Burns & Levinson, Boston, MA, Stephen Korn, Watertown, MA, Anthony J. Fitzpatrick, Michael R. Gostfried, Duane, Morris & Heckscher LLP, Dennis D. Allegretti, Duane, Morris & Heckscher LLP, Boston, MA, Timothy J. Dacey, III, Richard W. Renehan, Hill & Barlow, Boston, MA, Susan G.L. Glovsky, Hamilton, Brooks, Smith & Reynolds, P.C., Lexington, MA, Gary H. Levin, Woodcock, Washburn, Kurtz, Mackiewicz & Norris, Todd S. Holbrook, Eric H. Vance, Lynn B. Morreale, Woodcock Washburn Kurtz Mackiewicz & Norris LLP, Philadelphia, PA, Wayne M. Kennard, Hale & Dorr, Boston, MA, for Defendants.

Opinion

KEETON, District Judge.

I. Pending Matters

Pending for decision, after a three-day evidentiary hearing on September 14, 15, and 16, 1999, are the following motions:

(1) Defendant's Motion for Summary Judgment of Invalidity of the Patent In Suit (Docket No. 92, filed December 21, 1998) with supporting memoranda (Docket Nos. 93, 121, 129, 146, 153, 180, 211). Plaintiffs have filed numerous oppositions and replies (Docket Nos. 100, 110, 111, 125, 150, 201).

(2) At the beginning and at the end of a three-day evidentiary hearing on September 14, 15, and 16, 1999, plaintiffs moved for Partial Summary Adjudication with regard to all three of defendant's claims of patent invalidity: anticipation, impermissible recapture of surrendered subject matter, and an erroneously-designated assent of assignee of a patent for which a reissue application was pending. See Hearing Transcript, Volume I, at 18-19 (Docket No. 224) and Hearing Transcript, Volume III, at 40 (Docket No. 226). The substance of and the written support for plaintiffs' cross-motion for summary adjudication on these claims of defendant appear in their oppositions to Defendant's Motion for Summary Judgment. See Docket Nos. 110, 111, 125, 150, 201.

II. Procedural Background

This case involves plaintiffs' alleged cause of action against defendant for patent infringement. In response to plaintiffs' claims, defendant argues that plaintiffs' patent, U.S. Patent Reissue No. 35,741 (" '741 Reissue Patent"), is invalid for three reasons: (1) lack of novelty (i.e., anticipation), (2) unlawful recapture of surrendered subject matter in a reissued patent, and (3) procedural errors in the filing of the reissue application, namely misidentifying the assignee of U.S. Patent 5,154,809 (" '809 Patent") from which the '741 Reissue patent reissued. As noted above, the court held an evidentiary hearing over the period of three days, September 14-16, 1999. One purpose of the hearing was to determine whether triable jury issues exist with regard to the invalidity of the '741 Reissue patent.

At the close of the three-day hearing, defendant renewed its motion for summary judgment as to the invalidity of the '741 Reissue patent. Also, plaintiffs cross-moved for partial summary adjudication that as a matter of law no genuine dispute of material fact exists as to any of the defendant's three defenses.

"So at the end of the day, your Honor, [plaintiffs] would suggest that the facts are undisputed as to the third motion, and the appropriate action we would request would be to have the court enter a partial summary adjudication that the assent of assignee filed with a technically incorrect identification of one of the assignees has no effect on the validity of the patent.

We also think at the end, your Honor, the facts will support a determination by the Court that, as a matter of law, the original application had this `bond' language and therefore there has been no recapturing.

And as to the prior art, there are, for sure, disputed issues of fact, but on the record and Ionics' [defendant's] contention, we would suggest the Court enter partial summary adjudication that none of the references Ionics relies upon anticipates and renders on their own invalid any of the claims."

Hearing Transcript, Vol. I at 18-19.

III. Factual Background

This case arises from plaintiffs' development of an electrodeionization apparatus ("EDI") that became the subject matter of the '741 Reissue Patent. The '741 Reissue Patent, which issued on March 10, 1998, is a reissue of the '809 Patent, which issued on October 13, 1992.

Generally, the '741 Reissue Patent teaches a liquid purification process that depends on electrical forces to remove impurities, such as ionic salts, from a liquid such as water. In the EDI apparatus that is disclosed in the '741 Reissue Patent, a liquid to be purified flows through ion depleting compartments out of which ions are drawn through a permeable membrane into ion concentrating compartments by virtue of a polar electrical field. The ion depletion compartments contain mixed cation (negatively charged) and anion (positively charged) exchange resin beads in order to facilitate the migration of impurities such as ionic salts from the ion depletion compartments to the ion concentrating compartments; the ion concentrating compartments may contain ion exchange resin beads, if desired, depending upon the mode of electrodeionization.

The '741 Reissue Patent teaches an EDI apparatus in which the depletion compartments are made of a series of subcompartments formed by (1) an anion permeable membrane and a cation permeable membrane that extend along the length of the depletion compartments and (2) a pair of "ribs" that extends across the width of the depletion compartments. The '741 Reissue Patent specification describes these subcompartments as enabling an "efficient mixing of the liquid and the beads therein" by constraining the movement of solid ion exchange material and thereby effecting a more thorough and cost effective purification process. See '741 Reissue Patent, col. 5, lines 1-4, 44-50 (Pl.'s Ex. 4; Def.'s Ex. 501). The specification further explains that by controlling the dimensions of the subcompartments in the way that the '741 Reissue Patent describes in detail, see id. at col. 4, lines 50-67, the desired liquid purity can be attained with relatively less energy requirements, even over long time periods. See id. at col. 5, lines 50-55.

In the EDI apparatus taught by the '741 Reissue Patent, the ion exchange resin beads that are used in the ion depletion compartments and sometimes in the ion concentrating compartments are described, throughout the text of the patent, as being of "substantially uniform size." See, e.g., '741 Reissue Patent at p. 116,296 ("Abstract"); col. 1, line 30 and col. 2, line 27 ("Background of the Invention"); col. 2, lines 57-63 ("Summary of the Invention"); col. 4, lines 22-23, 30, col. 7, lines 46-47, col. 9, line 52 ("Description of Specific Embodiments"); col. 12, line 43 (Claim 1, and thus also Claims 2-8 that are dependent on Claim 1); col. 14, line 37 (Claim 11, and thus also Claims 12-18 that are dependent on Claim 11); col. 15, line 26 (Claim 19, and thus also Claim 20 that is dependent on Claim 19); col. 15, line 46 (Claim 21, and thus also Claims 22-30 that are dependent on Claim 21).

The '741 Reissue Patent's specification explains "substantially uniform size" as "mean[ing] that 90% of the beads are within ± 10% of the mean bead size and that the relative average size of one ionic form of resin beads to a second ionic form of resin beads in a mixture of resin beads is at least 0.8." See '741 Reissue Patent, col. 2, lines 57-63. This feature of the '741 Reissue Patent — ion exchange resin beads of substantially uniform size — is at the core of defendant's contention that claims 1-8 and 11-30 of the '741 Reissue Patent are invalid as anticipated by prior art that allegedly discloses ion exchange resin beads of substantially uniform size in EDI apparatuses.

IV. Standard of Review

A. At Summary Judgment

Summary judgment should be granted only if the court, viewing the evidence in the light most favorable to the non-moving party, determines that no genuine dispute of material fact exists. See Fed.R.Civ.P. 56. The movant has the "initial responsibility of informing the district court of the basis for its motion, and identifying those portions" of the record showing the absence of a genuine dispute of material fact. Celotex Corp. v. Catrett, 477 U.S. 317, 323, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). A factual question is material if a reasonable jury could return a verdict for the nonmoving party based at least in part on its determination of the factual question. See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). In a patent validity action such as this one, the burden on the party moving for judgment as a matter of law as to patent invalidity is even heavier than in other contexts generally because the patent is presumed valid. See 35 U.S.C. § 282 (1994).

B. Regarding A District Court's Review of the Patent and Trademark Office's Finding of Validity

One who challenges a patent's validity must prove invalidity by clear and convincing evidence. See Finnigan Corp. v. International Trade Com'n, 180 F.3d 1354, 1365 (Fed.Cir.1999). Thus, in order to satisfy its burden at summary judgment, the defendant-movant must show that no genuine dispute of material fact exists that would enable a reasonable jury to find by clear and convincing evidence that the patent is valid. See Anderson, 477...