Conceptus, Inc. v. Hologic, Inc.

Filing 433

ORDER REGARDING MOTIONS IN LIMINE by Judge Alsup denying 385 Motion in Limine; granting in part and denying in part 386 Motion in Limine; granting in part and denying in part 387 Motion in Limine; denying 388 Motion in Limine; denying 389 Motion in Limine; denying 398 Motion in Limine; granting 399 Motion in Limine; granting 400 Motion in Limine; granting in part and denying in part 401 Motion in Limine; denying 402 Motion in Limine (whalc1, COURT STAFF) (Filed on 9/27/2011)

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IN THE UNITED STATES DISTRICT COURT

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FOR THE NORTHERN DISTRICT OF CALIFORNIA
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CONCEPTUS, INC.,

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For the Northern District of California

United States District Court

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Plaintiff,
v.

ORDER REGARDING
MOTIONS IN LIMINE

HOLOGIC, INC.,

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Defendant.
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No. C 09-02280 WHA

This action is proceeding to trial on plaintiff’s patent-infringement claims against

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defendant. The final pretrial conference was held on September 16, 2011. In advance of that

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conference, plaintiff and defendant each submitted five motions in limine. Any denial of a motion

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in limine does not mean that the item at issue in the motion is admitted in evidence — it still must

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be moved in evidence, subject to any other objections, at trial. Similarly, any grant of a motion

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in limine does not exclude the item at issue in the motion under any and all circumstances; the

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beneficiary of an order in limine may open the door to the disputed evidence.

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1.

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Defendant Hologic, Inc. moved in limine to exclude the infringement opinion of

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Mark Glasser on the “permanently affixing . . . so that at least a portion of the fallopian tube is

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open” claim limitation as unreliable and untimely. For the reasons stated at the pretrial

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conference, the motion is DENIED with the exception that direct examination of any expert will be

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confined to the statements made in that expert’s opening report. Expert testimony that exceeds

DEFENDANT’S MOTION IN LIMINE NO. 1.

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the bounds of an opening report will be proper only after the door to such testimony is opened by

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the opposing party, either through the direct testimony of an opposing expert or through

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cross-examination. As such, material disclosed only in reply reports may not be referenced in

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opening statements or during the Glasser direct examination.

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2.

DEFENDANT’S MOTION IN LIMINE NO. 2.

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Defendant Hologic moved in limine to exclude the opinions of Mark Glasser on

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contributory and induced infringement. For the reasons stated at the pretrial conference, the

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motion is GRANTED IN PART AND DENIED IN PART. No expert shall testify as to intent or state of

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mind. Expert testimony that the components of Hologic’s Adiana system are specifically adapted
for use in the Adiana procedure would be proper, but expert opinion that they were designed to

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For the Northern District of California

United States District Court

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infringe the asserted patent claims will not be allowed.

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3.

DEFENDANT’S MOTION IN LIMINE NO. 3.

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Defendant Hologic moved in limine to exclude Conceptus, Inc.’s notice letters and

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complaint as proof of Hologic’s knowledge regarding infringement, or in the alternative for

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permission to teach the jury the full history of this action. This motion is complicated by the

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parties’ earlier stipulation that “[n]either side will make reference to a jury that the [voluntarily]

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dismissed patents and claims were once asserted in the case” (Dkt. No. 141). For the reasons

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stated at the pretrial conference, the motion is GRANTED IN PART AND DENIED IN PART.

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Conceptus may introduce the notice letters without waiving its right to enforce the stipulation. If

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Conceptus wishes to introduce the complaint, however, it must introduce the entire complaint,

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and doing so would relieve Hologic of its obligation not to mention the dismissed patents and

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claims to the jury.

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4.

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Defendant Hologic moved in limine to exclude testimony and evidence of objective

DEFENDANT’S MOTION IN LIMINE NO. 4.

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indicia of non-obviousness. The motion is DENIED. As to licensing, the motion is moot because

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Conceptus does not intend to introduce licensing evidence. As to the commercial success of

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Conceptus’s Essure product and the other objective indicia of non-obviousness, Hologic argues

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that Conceptus is unable to establish a nexus with the invention disclosed in the asserted claims.
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See In re Huai-Hung Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011). According to Hologic’s

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interpretation of the patent prosecution history, the purportedly novel aspect of the asserted

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claims to which a nexus must be drawn is the permanent affixation of a structure within the

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fallopian tube while the tube remains partially open (Br. 2). Hologic, however, misreads the

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prosecution history.

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The relevant method step of the claim that ultimately issued as claim 36 of United States
patent number 6,634,361 originally read: “affixing the resilient structure within the fallopian tube

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with a lumen-traversing region of the resilient structure” (Dkt. No. 427 at CON00028840). It

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originally was claim 48 in the application. The claim was rejected as anticipated by the Erb

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reference, and the rejection was overcome by distinguishing the Erb reference as follows):

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For the Northern District of California

United States District Court

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Independent claim 48 describes a method which includes
transcervically introducing a pre-formed resilient structure into a
target region of a fallopian tube. The Erb ‘345 reference does not
describe a pre-formed resilient structure which is introduced into a
fallopian tube. Therefore, Applicants traverse rejection of claim
48 which is allowable.

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(id. at CON00028878, CON00028894). Thus, the practice of introducing a pre-formed structure
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into a fallopian tube was identified as a point of novelty.
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The claim later was rejected as anticipated by the Callister reference
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(id. at CON00028901). The applicants overcame this second rejection by pointing out that the
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application claimed a priority date earlier than the publication date of the Callister reference,
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meaning that the Callister reference was not prior art (id. at CON00028916). At the same time,
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the applicants amended several claims “to more specifically describe particular aspects of the
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present invention” (ibid.). The amendment added limitations to the relevant method step,
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transforming it into the version that ultimately issued as claim 36 in the ’361 patent:
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“permanently affixing the resilient structure within the fallopian tube with a lumen-traversing
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region of the resilient structure so that at least a portion of the fallopian tube is open”
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(id. at CON00028921). Contrary to Hologic, however, this amendment was not made in order to
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overcome prior art.
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The claim was rejected once more for double-patenting in a co-pending application, and

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then it was allowed after the co-pending application was disclaimed (id. at CON00028993,

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CON000290001–02, CON00029019).

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Having reviewed the prosecution history of the ’361 patent, this order finds that the record

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does not support Hologic’s view that permanent affixation while the fallopian tube remains open

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is the novel aspect of the asserted claims with which a nexus must be established. This particular

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limitation was not added in order to overcome prior art, and it is only one aspect of one method

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step. Hologic has not shown that this limitation is the only point of supposed novelty in the

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asserted claims. Hologic’s argument that Conceptus is unable to establish a nexus with this
particular aspect of the claims therefore need not be further considered. Be that as it may, the jury

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For the Northern District of California

United States District Court

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will be properly instructed on the general law of a requirement of a nexus for commercial

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success purposes.

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5.

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Defendant Hologic moved in limine to exclude argument interpreting the asserted patent

DEFENDANT’S MOTION IN LIMINE NO. 5.

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claims to encompass permanent affixation accomplished via tissue ingrowth or use of

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radiofrequency energy. Having considered the prosecution history and the parties’ supplemental

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briefing, the motion is DENIED without prejudice to further consideration at the end of the

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evidence. The disputed claim-construction issue will not be resolved on the present record and

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indeed need not be resolved until the jury is charged at the end of the trial. The Court will benefit

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from weighing the trial evidence in resolving this claim construction question.
PLAINTIFF’S MOTION IN LIMINE NO. 1.

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6.

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Plaintiff Conceptus moved in limine to exclude evidence and argument that the

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“permanently affixing” method step requires mechanical affixation or cannot be accomplished by

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way of tissue ingrowth. This motion mirrors defendant’s motion in limine number five,

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referenced above. Like its counterpart, the motion is DENIED without prejudice. The disputed

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claim-construction issue will not be resolved on the present record and indeed need not be

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resolved until the jury is charged at the end of the trial.

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PLAINTIFF’S MOTION IN LIMINE NO. 2.

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Plaintiff Conceptus moved in limine to exclude evidence, testimony, and argument by

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Thomas Ryan regarding expert opinions he supposedly did not timely disclose. Specifically,

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Conceptus targets Mr. Ryan’s opinions on enablement and obviousness. The motion is

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GRANTED. Material disclosed for the first time in Mr. Ryan’s reply report will not be admissible

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during his direct testimony. Mr. Ryan will be subject to the same limiting procedures as all other

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experts, as explained with reference to defendant’s motion in limine number one. In particular,

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any obviousness opinions must be supported by disclosure of a specific combination of prior art

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references. The verdict form, however, will not list specific prior art references. The enablement
opinions Mr. Ryan disclosed for the first time in his reply report are addressed in detail in a

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For the Northern District of California

United States District Court

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separate order.

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To be clear, there may be circumstances wherein the burden is on the patent holder to

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demonstrate what its specification discloses by way of steps and their equivalents (such as when

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Section 112 paragraph 6 is involved). This burden would not be affected by the instant ruling.

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Plaintiff Conceptus moved in limine to exclude evidence, testimony, and argument

PLAINTIFF’S MOTION IN LIMINE NO. 3.

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concerning Hologic’s patents. Having considered the parties’ supplemental submissions, the

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motion is GRANTED. Hologic’s patents are excluded from evidence subject to a specific offer of

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proof at trial and a specific showing of relevance and probativeness.
PLAINTIFF’S MOTION IN LIMINE NO. 4.

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Plaintiff Conceptus moved in limine to exclude evidence, testimony, and argument

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regarding prior litigation between Conceptus and Ovion, which is not a party to this action.

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Having considered the parties’ supplemental submissions, the motion is GRANTED IN PART AND

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DENIED IN PART. The categorical exclusion Conceptus requests is overbroad insofar as the

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motion does not identify specific items of proof. For example, deposition transcripts, inventor

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notebooks, and other such items from the prior litigation that are unrelated to settlement will not

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be excluded on the grounds set forth in the motion.

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The fact of the settlement between Conceptus and Ovion shall not be introduced to show

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that Ovion first invented any of the technology there at issue. The license agreement they

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reached, however, will not be excluded wholesale. It may be introduced for purposes not

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prohibited by FRE 408, subject to other possible objections. In particular, the license agreement

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may be introduced as evidence of the rates paid for licenses to patents comparable to the patent in

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suit — the second Georgia-Pacific factor relevant to determination of a reasonable royalty. See

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Georgia-Pacific Corp. v. U.S. Plywood Corp., 318 F. Supp. 1116, 1120 (S.D.N.Y. 1970). The

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license agreement in question required Conceptus to pay Ovion for permission to use Ovion’s

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patent; it did not require any party to pay for permission to use the Conceptus patent asserted in
this action (or any other Conceptus patent for that matter). As such, the decisions Conceptus cites

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For the Northern District of California

United States District Court

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concerning evidence of an established royalty for the asserted patent (Georgia-Pacific factor one)

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or a hypothetical negotiation concerning the asserted patent (factor fifteen) are inapposite.

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Moreover, any influence the litigation context may have had on the price of the Ovion-Conceptus

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license would impact its evidentiary weight, not its admissibility. Conceptus cites no binding

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authority that would require complete exclusion of the license agreement.

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To the extent the admissibility of particular items for particular purposes is not addressed
herein, the motion is denied without prejudice to considering specific objections at trial.

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10.

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Plaintiff Conceptus moved in limine to exclude evidence, testimony, and argument

PLAINTIFF’S MOTION IN LIMINE NO. 5.

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regarding its requests for equitable relief, including its unsuccessful motion for a preliminary

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injunction, which was based on patents that no longer are asserted. The motion is DENIED. The

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fact that Conceptus has requested equitable relief possibly is relevant to issues that will be

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decided by the jury. However, no mention shall be made of the denial of the preliminary

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injunction without first obtaining clearance from the Court given an offer of proof out of the

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presence of the jury. This ruling does not release Hologic from its stipulated agreement not to

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reference patents or claims that Conceptus voluntarily dismissed from this action.

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IT IS SO ORDERED.

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Dated: September 27, 2011.

WILLIAM ALSUP
UNITED STATES DISTRICT JUDGE

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For the Northern District of California

United States District Court

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