Univ. of Va. Patent Found. v. Gen. Electric Co. D/B/A/ Ge Healthcare

• Decision Date: 27 May 2011
• Docket Number: Civil No. 3:08–cv–00025.
• Parties: UNIVERSITY OF VIRGINIA PATENT FOUNDATION, Plaintiff,v.GENERAL ELECTRIC COMPANY d/b/a/ GE Healthcare, Defendant.
• Court: U.S. District Court — Western District of Virginia

792 F.Supp.2d 904

UNIVERSITY OF VIRGINIA PATENT FOUNDATION, Plaintiff,

v.GENERAL ELECTRIC COMPANY d/b/a/ GE Healthcare, Defendant.

Civil No. 3:08–cv–00025.

United States District Court, W.D. Virginia,Charlottesville Division.

May 27, 2011.

Charles Connor Crook, III, Eamon Francis Redmond, Boyle, Bain, Reback & Slayton, Charlottesville, VA, Jennifer M. Rynell, Timothy Tiewei Wang, Alfonso Garcia Chan, Joseph F. Depumpo, Justin B. Kimble, Shore Chan Bragalone Depumpo LLP, Dallas, TX, for Plaintiff.Carl G. Anderson, Charles Kramer Verhoeven, David Eiseman, Jason S. Takenouchi, Quinn Emanuel Urquhart Oliver & Hedges LLP, David Thomas Pollock, Reed Smith LLP, San Francisco, CA, Gabriel Simeone Gross, Mark Yeh–Kai Tung, Victoria F. Maroulis, Quinn Emanuel Urquhart & Sullivan LLP, Redwood Shores, CA, Melissa Wolf Riley, Robert Craig Wood, McGuire Woods LLP, Charlottesville, VA, for Defendant.

Memorandum Opinion

NORMAN K. MOON, District Judge.

This matter is before the Court upon Defendant's Motion for Summary Judgment of Intervening Rights (docket no. 185) and Plaintiff's Motion for Certification to Appeal (docket no. 188). The Court has fully considered the arguments and authorities set forth in the parties' filings, as well as those presented at the April 27, 2011 hearing. For the following reasons, the Court will deny Defendant's Motion for Summary Judgment of Intervening Rights and deny Plaintiff's Motion for Certification to Appeal.

I. Background

Plaintiff University of Virginia Patent Foundation (“Patent Foundation”) alleges that Defendant General Electric Company d/b/a G.E. Healthcare (“GE”) infringed and continues to infringe United States Patent No. 5,245,282 (“'282 Patent”) for an invention entitled “Three–Dimensional Magnetic Resonance Imaging.” The '282 Patent describes an invention of “a rapid process for producing three-dimensional magnetic resonance imaging” through a pulse sequence which is referred to as 3D MP–RAGE. Claim 1, its only independent claim, provides:

In a method for producing a set of magnetic resonance three-dimensional image data, a preparation-acquisition-recovery pulse sequence cycle comprising the steps of:

a—a magnetization preparation period in which a series of at least one of RF pulses, gradient field pulses, and time delays are applied to encode the desired contrast properties in the form of longitudinal magnetization,

b—a data acquisition period, said data acquisition period including at least two repetitions of a gradient echo sequence to acquire data for a fraction of k-space,

c—a magnetization recovery period which allows T1 and T2 relaxation before the start of the next sequence cycle, and

d—repeating steps a, b and c until a predetermined k-space volume is sampled.

Claim 4, which is dependent on Claim 1, and was canceled by the Patent Foundation in reexamination, provides:

The method of claim 1, wherein said magnetization recovery period has a time of zero.

A more detailed summary of the procedural history of this litigation is included in the Court's two previous opinions on this matter. See Univ. of Va. Patent Found. v. Gen. Elec. Co., 755 F.Supp.2d 709 (W.D.Va.2010) ( “Opinion”); Univ. of Va. Patent Found. v. Gen. Elec. Co., 755 F.Supp.2d 738 (W.D.Va.2011) (“Reconsideration Opinion”). Briefly, the '282 Patent was granted in 1993. In May 2008, the Patent Foundation brought this infringement action against GE. Subsequently, GE filed a third party request with the United States Patent and Trademark Office (“PTO”) for ex parte reexamination of the '282 Patent, arguing that certain prior art anticipated or rendered obvious several claims of the '282 Patent, including Claim 1 and Claim 4. The PTO granted the request for reexamination because it raised substantial new questions of patentability. Upon reexamination, the PTO rejected all of the claims in question. Specifically, the PTO rejected Claim 1 because it was anticipated and rendered obvious by prior art, and it rejected Claim 4 because it was rendered obvious by prior art. Despite its earlier position that Claim 4 was patentable over prior art, the Patent Foundation filed an Amendment canceling Claim 4. The Patent Foundation argued to the PTO that the magnetization recovery period in Claim 1 must be a finite period of time, and therefore Claim 4 improperly depended from Claim 1 because it disclosed a magnetization recovery period of time zero. The Patent Foundation proceeded to distinguish the '282 Patent from prior art on the basis of the existence of a finite magnetization recovery period that allows T1 and T2 relaxation. Based on the Patent Foundation's response, the PTO withdrew all of its rejections of the claims (except for those pertaining to the canceled Claim 4) and issued the reexamination certificate on May 4, 2010. The PTO specifically relied upon the fact that the magnetization recovery period corresponded to a finite period of time in order to distinguish the sequencing process disclosed in the '282 Patent from similar processes disclosed in prior art.

After reexamination concluded, GE moved for partial summary judgment, requesting a finding of no liability for any infringement that occurred prior to the issuance of the reexamination certificate. The parties also requested that the Court perform claim construction to resolve the meaning of disputed terms in the '282 Patent. In the Opinion, I determined that from the period of the patent's filing date to its reexamination, the term “magnetization recovery period” encompassed the possibility of having a duration of zero. I then held that the Patent Foundation's arguments in reexamination and its cancellation of Claim 4 operated as a clear disclaimer of the possibility of the recovery period being zero and effectively narrowed the scope of the claim without explicitly amending its language. After I found that the meaning of “magnetization recovery period” was changed in reexamination, I proceeded to hold that the change was substantive, and, pursuant to 35 U.S.C. §§ 307(b) and 252, that the Patent Foundation was precluded from collecting for infringement of Claim 1 prior to the issuance of the reexamination certificate. Accordingly, I granted GE's motion for partial summary judgment, which sought a judgment of no liability on all claims of infringement prior to reexamination. Univ. of Va. Patent Found., 755 F.Supp.2d 709. The Patent Foundation moved for reconsideration of the Opinion, which I denied. Univ. of Va. Patent Found., 755 F.Supp.2d 738.

Presently, the Patent Foundation moves the Court to certify the Opinion and the Reconsideration Opinion for an interlocutory appeal to the United States Court of Appeals for the Federal Circuit. GE moves for summary judgment of absolute and equitable intervening rights. Pursuant to a stipulation by both parties, I stayed the proceedings pending the outcome of the instant motions.

II. Applicable Law

Summary judgment is appropriate if “the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law.” Fed.R.Civ.P. 56(a). In order to preclude summary judgment, the dispute about a material fact must be “ ‘genuine,’ that is, if the evidence is such that a reasonable jury could return a verdict for the nonmoving party.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986); see also JKC Holding Co. v. Wash. Sports Ventures, Inc., 264 F.3d 459, 465 (4th Cir.2001). However, if the evidence of a genuine issue of material fact “is merely colorable or is not significantly probative, summary judgment may be granted.” Anderson, 477 U.S. at 250, 106 S.Ct. 2505. “As to materiality ... [o]nly disputes over facts that might affect the outcome of the suit under the governing law will properly preclude the entry of summary judgment.” Id. at 248, 106 S.Ct. 2505.

Once a motion for summary judgment is properly made and supported, the non-moving party may not rely merely on allegations or denials in its own pleading, rather it must set out “specific facts showing that there is a genuine issue for trial.” Celotex Corp. v. Catrett, 477 U.S. 317, 324, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). When considering a summary judgment motion, the court must view the facts in the light most favorable to the party opposing the motion. Austin v. Clark Equip. Co., 48 F.3d 833, 835 (4th Cir.1995). “[T]he court must draw all reasonable inferences in favor of the nonmoving party, and it may not make credibility determinations or weigh the evidence.” Reeves v. Sanderson Plumbing Prods., Inc., 530 U.S. 133, 150, 120 S.Ct. 2097, 147 L.Ed.2d 105 (2000).

III. Motion for Certification to Appeal

The procedure for appealing interlocutory orders of the district court is governed by 28 U.S.C. § 1292(b), which provides, in pertinent part, as follows:

When a district judge, in making in a civil action an order not otherwise appealable under this section, shall be of the opinion that such order involves a controlling question of law as to which there is substantial ground for difference of opinion and that an immediate appeal from the order may materially advance the ultimate termination of the litigation, he shall so state in writing in such order. The Court of Appeals which would have jurisdiction of an appeal of such action may thereupon, in its discretion, permit an appeal to be taken from such order, if application is made to it within ten days after the entry of the order....

In summary, leave to file an interlocutory appeal should be granted only when (1) the order involves a controlling question of law, (2) as to which there is a substantial ground for a difference of opinion, and (3) immediate appeal would materially advance the termination of the litigation. To show that an interlocutory appeal is warranted under § 1292(b), the burden is on the prospective appellant to demonstrate “that exceptional circumstances justify a departure from...