Masimo Corporation v. Philips Electronics North America Corporation et al
Filing
721
REPORT AND RECOMMENDATIONS re 426 MOTION for Summary Judgment of No Willful Infringement filed by Philips Electronics North America Corporation, Philips Medizin Systeme Boblingen Gmbh, 424 MOTION for Summary Judgment Regarding Da mages Issues filed by Philips Electronics North America Corporation, Philips Medizin Systeme Boblingen Gmbh. Please note that when filing Objections pursuant to Federal Rule of Civil Procedure 72(b)(2), briefing consists solely of the Object ions (no longer than ten (10) pages) and the Response to the Objections (no longer than ten (10) pages). No further briefing shall be permitted with respect to objections without leave of the Court. Objections to R&R due by 7/1/2013. Signed by Judge Mary Pat Thynge on 6/14/13. (cak)
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
MASIMO CORPORATION,
Plaintiff,
v.
PHILIPS ELECTRONICS NORTH AMERICA
CORPORATION and PHILIPS MEDIZEN
SYSTEME BOBLINGEN GMBH,
Defendant.
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C.A. No. 09-80-LPS-MPT
MEMORANDUM ORDER
I.
INTRODUCTION
In February 2009, Masimo Corporation (“Masimo”) filed suit alleging Philips
Electronics North America Corporation and Philips Medizin Böblingen GmbH
(collectively, “Philips”) infringed various patents dealing with pulse oximetry.1 Philips
responded raising patents against Masimo involving the same technology. Previously,
the court addressed the parties motions for summary judgment on liability and on
experts. Philips now moves for summary judgment on two issues: (1) willful
infringement,2 and (2) lost profits damages.3
II.
LEGAL STANDARDS
A.
Summary Judgment
“The court shall grant summary judgment if the movant shows that there is no
1
D. I. 1.
D.I. 426. Briefing on this motion is found at D.I. 427 (Philips’ opening brief), D.I. 501 (Masimo’s
answering brief) and D.I. 600 (Philips’ reply brief).
3
D.I. 424. Briefing for Philips’ motion for summary judgment can be found at D.I. 425 (Philips’
opening) brief, D.I. 487 (Masimo’s answering brief) and D.I. 595 (Philips’ reply brief).
2
genuine dispute as to any material fact and the movant is entitled to judgment as a
matter of law.”4 Summary judgment is appropriate “against a party who fails to make a
showing sufficient to establish the existence of an element essential to that party’s case,
and on which that party will bear the burden of proof at trial.”5 The moving party bears
the burden of demonstrating the absence of a genuine issue of material fact,6 by citing
to “particular parts of materials in the record, including depositions, documents,
electronically stored information, affidavits or declarations, stipulations (including those
made for purposes of the motion only), admissions, interrogatory answers, or other
materials,”7 or by “showing that the materials cited do not establish the absence or
presence of a genuine dispute, or that an adverse party cannot produce admissible
evidence to support the fact.”8 If the moving party has carried its burden, the
nonmovant must “come forward with specific facts showing that there is a genuine issue
for trial.”9 “[A]ll reasonable inferences,” will be drawn by the court “in favor of the
nonmoving party, and it may not make credibility determinations or weight the
evidence.”10
The non-moving party must, “do more than simply show that there is some
metaphysical doubt as to the material fact” to defeat a motion for summary judgment.11
However, the “mere existence of some alleged factual dispute between the parties will
4
FED. R. CIV .P. 56(a).
Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986).
6
Matsushita Elect. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586 n.10 (1986).
7
FED. R. CIV .P. 56(c)(1)(A).
8
FED. R. CIV. P. 56(c)(1)(B).
9
Matsushita, 475 U.S. at 587 (internal quotation marks omitted).
10
Reeves v. Sanderson Plumbing Prods., Inc., 530 U.S. 133 (2000).
11
Matsushita, 475 U.S. at 586-7.
5
2
not defeat an otherwise properly supported motion for summary judgment;” a factual
dispute is genuine only where “the evidence is such that a reasonable jury could return
a verdict for the non-moving party.”12 Additionally, “[i]f the evidence is merely colorable,
or is not significantly probative, summary judgment may be granted.”13 Thus, the “mere
existence of a scintilla of evidence” in support of the non-moving party’s position is
insufficient to defeat a motion for summary judgment; there must be “evidence on which
the jury could reasonably find” for the non-moving party.14
III.
ANALYSIS
A.
Wilfulness
The Federal Circuit has set forth a two-prong test for establishing willful
infringement.15 The ‘objective’ first prong requires the patentee to show, “by clear and
convincing evidence that the infringer acted despite an objectively high likelihood that its
actions constituted infringement of a valid patent.”16 Once the first prong is satisfied, the
plaintiff must satisfy the ‘subjective’ second prong, “that this objectively-defined risk
(determined by the record developed in the infringement proceeding) was either known
or so obvious that it should have been known to the accused infringer.”17 The plaintiff
must prove the objective prong “by clear and convincing evidence as a predicate to the
jury’s consideration of the subjective prong.”18 Because consideration of the subjective
12
Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247-8 (1986).
Id. at 249-50.
14
Id. at 252.
15
In re Seagate Tech., LLC, 497 F.2d 1360 (Fed. Cir. 2007)
16
Id. at 1371.
17
Id.
18
Powell v. Home Depot U.S.A., Inc., 663 F.3d 1221, 1236 (Fed. Cir. 2011), reh’g en banc denied
(emphasis added).
13
3
second prong occurs only if the plaintiff proves the objective prong, “[s]hould the court
determine that the infringer’s reliance on a defense was not objectively reckless, it
cannot send the question of willfulness to the jury.”19 When considering the objective
first prong, the Federal Circuit has stated, “the answer to whether an accused infringer’s
reliance on a particular issue or defense is reasonable is a question for the court when
the resolution of that particular issue or defense is a matter of law.”20
Masimo contends summary judgment is inappropriate because Philips’ defenses
constitute questions of fact, or mixed questions of law and fact, which should be sent to
a jury.21 Circumstances may arise when an alleged infringer’s defense to willful
infringement present separate issues of fact and law. Despite such mixed questions,
the Federal Circuit has determined, “[w]e believe that the court is in the best position for
making the determination of reasonableness. This court therefore holds that the
objective determination of recklessness, even though predicated on underlying mixed
questions of law and fact, is best decided by the judge as a question of law.”22 The
Federal Circuit provided further clarification, stating that,
[w]hen a defense or noninfringement theory asserted by an infringer is
purely legal (e.g., claim construction), the objective recklessness of such a
theory is a purely legal question to be determined by the judge. [. . .] When
the objective prong turns on a fact question [. . .] or on legal questions
dependent on the underlying facts, as related, for example, to questions of
obviousness, the judge remains the final arbiter of whether the defense
19
Id. citing DePuy Spine Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1335-37 (Fed. Cir.
2009).
20
Powell, 663 F.3d at 1236, citing Cohesive Tech., Inc. v. Waters Corp., 543 F.3d 1351, 1374
(Fed. Cir. 2008).
21
D.I. 501 at 19-20.
22
Bard Peripheral Vascular, Inc. v. W.L. Gore & Assocs., Inc., 682 F.3d 1003, 1006-7 (Fed. Cir.
2012), cert. denied sub nom. W.L Gore & Assocs., Inc. v. C.R. Bard, Inc., 133 S. Ct. 932 (2013).
4
was reasonable.23
While a judge “may” permit a jury to determine underlying facts when considering the
first objective prong of Seagate, this approach is not mandatory because, “the ultimate
legal question of whether a reasonable person would have considered there to be a
high likelihood of infringement of a valid patent should always be decided as a matter of
law by the judge.”24
1. The ‘222 Patent
Philips contends that under Seagate, it is entitled to judgment of no willful
infringement.25 Regarding the ‘222 Patent, Philips argues its reliance on reasonable,
credible invalidity and non-infringement defenses regarding that patent is not
objectively reckless.26 Philips also notes its credible claim construction position, which
was initially adopted by this court, provides a strong non-infringement position.27
Although Judge Stark ultimately disagreed with the construction, Philips posits, “that a
federal judge recommended adoption of Philips’ proposed claim construction is strong
evidence of the reasonableness of its position.”28 Masimo contends Philips “depended
exclusively on unduly narrow constructions of the word ‘signal processor,’” and thus was
objectively unreasonable.29 Masimo avers its ordinary meaning of “signal processor” is
supported by disclosure of the ‘222 patent and by decisions of the district court and
23
Id. at 1007.
Id. at 1008, citing DePuy, 567 F.3d at 1324.
25
D.I. 427
26
Id. at 6
27
Id. at 7.
28
Id. at 8, citing Tarkus Imaging, Inc. v. Adobe Systems, Inc., C.A. No. 10-63-LPS, 2012 WL
2061932 at *2 (D. Del. June 5, 2012).
29
D.I. 501 at 10.
24
5
Federal Circuit in the prior Nellcor litigation.30 Masimo claims the Federal Circuit has
upheld objective unreasonableness determinations where a party’s proposed claim
construction ignored the “entirety of the specification and prosecution history, and thus
was unsupported by the intrinsic record.”31 Masimo further asserts a noninfringement
position is not objectively reasonable when “premised on a claim construction
determination that the court ultimately abandoned or modified after the trial
commenced.”32 Masimo also argues Philips’ ‘222 invalidity defenses are objectively
unreasonable.
Philips’ proposed claim construction of the term “signal processor” of the ‘222
patent, under which it would not have infringed, was reasonable and credible as it relied
on statements which identified the present invention as a signal processor that used a
correlation canceler.33 Although Philips’ claim construction was eventually rejected by
the district judge after objections were filed against this court’s construction, since
Philips “asserted reasonable constructions under which its products would not infringe
precludes a finding that the first prong of Seagate is satisfied.”34 Contrary to Masimo’s
blanket assertion, no evidence suggests Philips’ proposed claim construction failed to
consider and apply the specification and prosecution history or was entirely
unsupported by the intrinsic evidence.35
Philips also relies on its invalidity defense to show an absence of objective
30
Id. at 11, citing D.I. 319 at 3-5.
Id. at 12, quoting MarcTec, LLC v. Johnson & Johnson, 664 F.3d 907, 918 (Fed. Cir. 2012).
32
Id. at 12, quoting Powell, 663 F.3d at 1237 (emphasis added).
33
D.I. 600 at 6; see D.I. 163 at 8-9.
34
Tarkus, 2012 WL at *2, citing Cohesive Techs., 543 F.3d at 1374
35
MarcTec, 664 F.3d at 918.
31
6
recklessness. Philips filed motions for summary judgment on the issue of invalidity,
specifically written description and anticipation, which were recently decided by this
court.36 This court held the written description regarding claims 17 and 18 of the ‘222
Patent were inadequate and granted summary judgment in favor of Philips.37 The
partial success of its invalidity defenses lend credibility to the reasonableness of Philips’
actions which defeats the objective prong of Seagate.
2. The ‘984 Patent
Regarding the ‘984 patent, Philips claims it presented “strong invalidity
arguments against” the patent.38 Philips contends its products do not infringe because
they use two techniques which employ different input data,39 significant defenses that
are objectively reasonable under any claim construction.40 In opposing, Masimo claims
Philips’ ‘984 invalidity defenses are baseless because of the numerous similarities
between the two products. Masimo asserts both FAST and SET have two algorithms
for calculating saturation, that they run parallel and actively measure the saturation of
pulsing blood.41 Additionally, Masimo contends Philips’ basis for noninfringement–that
the two algorithms Philips uses for calculating oxygen saturation do not receive the
same “time window of data”–is flawed because the asserted claims do not require the
use of a particular time window.42
36
Masimo Corp. v. Philips Electronics North American Corp., C.A. No. 09-80 LRS-MPT, 2013 WL
1332606 (D. Del. April 2, 2013).
37
Id. at *13.
38
D.I. 427 at 8.
39
D.I. 395 at 17-19.
40
D.I. 427 at 9.
41
D.I. 501 at 15.
42
Id. at 15-16.
7
The court agrees with Philips. Reasonable invalidity arguments provide a basis
for precluding the subjective prong of Seagate.43 Philips asserts it acted primarily with
the invalidity of the ‘984 patent in mind. Philips points to deposition testimony to show
Masimo’s expert, Dr. Gail Baura, was having difficulty ascertaining anticipating prior art,
even after this court had concluded claim construction. Specifically, they point to her
reliance on personal interpretation to define the claims in the patent.44 Masimo’s
positional shift also speaks to the difficulty interpretation creates when defining claims.45
Philips presents evidence of different input data for its two calculation techniques, while
Masimo’s parallel calculations require the same input data, according to Dr. Baura.46
Further representing the reasonableness of Philips non-infringement defense is
this court’s recent ruling.47 Philips was granted summary judgment on the asserted
claims of the ‘984 Patent on the basis of non-infringement after the court determined the
FAST time-domain and frequency-domain calculations were made at separate
intervals.48 Given the reasonableness of the defenses set forth by Philips, this court
finds the objective prong of Seagate has not been met in regards to wilfulness and the
‘984 Patent.
3. The ‘272 Patent
43
Bard Peripheral Vascular, Inc., 682 F.3d at 1005 (citing Spine Solutions, Inc. v. Medtronic
Sofamor Danek USA, Inc., 620 F.3d 1305, 1319 (Fed.Cir. 2010).
44
D.I. 431, Ex. 25 (Baura Depo.) at 270:6-10 (“Q. Is it fair to say that your opinion related to Claim
1 and whether it’s anticipated depends entirely on your interpretation of the claim that it requires parallel
alternative calculations? A. Well, that’s what’s stated in the claim.”).
45
D.I. 427 at 9.
46
D.I. 431, Ex. 25 at 271:9-12 (“A. I’m saying that the data that comes in should be the same data
that goes into each calculator, and calculations within each calculator should be made at the same time.”)
47
Masimo Corp., 2013 WL 1332606, at *29.
48
Id. (“As Philips succinctly puts it, ‘[t]wo seconds is not eight seconds.’ Consequently, the court
grants Philips’ motion for summary judgment of non-infringement of the asserted claims of the ‘984
patent.”).
8
On the ‘272 patent, Philips asserts its conduct was not objectively reckless
because the asserted claim describes a limitation which, “is nowhere described in the
‘272 patent,” and as such the claims are invalid for lack of written description under 35
U.S.C. § 112.49 Additionally, while its claim construction proposal for “signal model” was
rejected, Philips avers it relied on well-established case law and an explicit definition of
a term in the specification, which evidences lack of objective recklessness.50 Masimo
takes issue with Philips proposed definition “signal model” insofar as Philips definition
was disclosed in connection with time-domain processing rather than frequency domain
processing.51 Further, the additional examples of “signal models” within the patent did
not all fall squarely within the explicit definition used in the patent and further
undermines Philips reasonableness argument. Masimo argues Philips’ ‘272 invalidity
and noninfringement arguments are baseless because Philip’s noninfringement expert,
Dr. Robert T. Stone (“Stone”), did not and cannot read Philips’ source code.52 In
contrast, Masimo points to its expert, Dr. Gail Baura, who opines Philips’ source code
establishes infringement.53
Philips presents reasonable noninfringement arguments which preclude the
subjective prong of Seagate. In particular, Philips points to the specific language of the
patent regarding a definition of “signal model.” Philips, as evidenced by its expert Dr.
Stone, believes its products simply do not infringe under the patent’s initial definition of
49
D.I. 427 at 9-10.
Id. at 11, citing iLOR, LLC v. Google, Inc., 631 F.3d 1372, 1379 (Fed. Cir. 2011).
51
D.I. 501 at 16.
52
Id. at 17, citing D.I. 503, Ex. 56 at 211:20-212:2.
53
Id.
50
9
“signal model”.54 While the court ultimately held the ‘272 Patent disclosed additional
examples of signal models which allowed a different claim construction, Philips was
objectively reasonable in relying upon the definition explicitly identified in the patent
itself. “Consistent with [the] general principle, our cases recognize that the specification
may reveal a special definition given to a claim term by the patentee that differs from the
meaning it would otherwise possess. In such cases, the inventor’s lexicography
governs.”55 Under this principle, Philips reliance was reasonable and fails to show any
objective recklessness on its behalf.
4. The ‘194 Patent
Finally, Philips argues it was not objectively reckless concerning the ‘194 patent
by presenting reasonable, credible invalidity and noninfringement defenses.56 Philips
maintains the scope of the claims of the ‘194 patent are invalid under 35 U.S.C § 112,
since they are overly broad and neither supported nor enabled by the written
description.57 Echoing previous arguments and case citations, Philips claims its reliance
on rejected claim constructions is not objectively reckless.58 In response, Masimo notes
Philips merely recites two of its rejected claim construction positions without explaining
why those constructions were reasonable, or provide noninfringment defenses.59
Philips presents a reasonable defense in its invalidity argument. Primarily,
Philips avers the written description fails to specifically describe the processes put forth
54
D.I. 429, Ex 14C (Stone Rpt.) at ¶¶25-34.
Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005).
56
D.I. 427 at 11.
57
Id.
58
Id. at 12.
59
D.I. 501 at 17-18
55
10
in the ‘194 Patent.60 In particular, Philips points to the fact that Masimo’s products work
only with a clean signal and fail to effectively utilize an unclean signal.61 Philips read the
claims to include both clean and unclean signals, claiming the ‘194 Patent to be overly
broad and, therefore, invalid. When questioned by Philips, the inventor Rex McCarthy,
acknowledged that his invention only accepted clean signals.62 The court ultimately
agreed with this assessment of disclosure, further evidencing a lack of objective
recklessness.63 Philips also proffered other arguments based on enablement to
demonstrate invalidity.64 While a jury can always choose who to believe at trial, this
does not undermine the reasonable nature of Philips’ invalidity defense. When a
reasonable defense is presented, the objective prong of Seagate is generally not met.65
5. Appropriateness of Summary Judgment on Willfulness
The parties disagree as to the relevance of evidence regarding a parties’ state of
mind under the first prong of Seagate. While Philips considers such evidence
irrelevant,66 Masimo contends, “[e]vidence supporting the existence of a high
infringement risk is not irrelevant to the first prong merely because it also may be
60
D.I. 407 at 9-16.
D.I. 427 at 11.
62
D.I. 433, Ex. 44 (McCarthy Depo.) at 230:13-20 (“Q. All right. And there’s no input to the rulesbased algorithm in Figure 12 other than a clean spectrum; correct? A. That’s correct. Q. And there’s no
description in Columns 17 to 20 that you just read that suggest feeding the rules-based algorithm anything
other than a clean spectrum; correct? A. Correct.”).
63
Masimo Corp., 2013 WL 1332606, at *54 (D. Del.) (“The court determines the specification of
the ‘194 patent does not disclose possession of an invention that can estimate pulse rate utilizing a signal
determined to contain motion artifacts. Consequently the asserted claims, which would cover such
estimation, are invalid for lack of adequate written description.”).
64
D.I. 407 at 9-16.
65
Tarkus Imaging, Inc., 867 F. Supp. 2d at 537 (“Because [Philips] asserts credible, reasonable
non-infringement theories, the first prong of Seagate cannot be satisfied.”).
66
D.I. 600 at 10.
61
11
relevant to the defendant’s state of mind under the second prong.”67 In support of its
contention, Masimo references the Federal Circuit’s decisions in i4i Limited
Partnership68 and K-Tec69. However, as opposed to the case at bar, neither case dealt
with summary judgment, but denial of motions for judgement as a matter of law. Both
matters had proceeded through to trial, with jury verdicts returned, and in i4i, the
Federal Circuit’s “review [was] limited and deferential.”70 Regarding the objective prong
of Seagate, this court and the Federal Circuit have held the, “state of mind of the
accused infringer is not relevant.”71 In light of such precedent, neither the factors
discussed by the Federal Circuit in i4i nor evidence regarding a parties’ state of mind
are relevant to the objective first prong of Seagate.
Masimo further argues this court should not grant, “summary judgment on an
undeveloped record and without any consideration as to the credibility of witnesses.”72
A determination of objective reasonableness should be determined, “based on the
record ultimately made in the infringement proceedings.”73 Masimo asserts Philips,
“seeks to convince this Court that, merely because Philips filed such motions [for
summary judgment], the case is close[d] [sic].”74 While the case at bar is not closed, the
record on infringement is, as there is no further discovery contemplated or scheduled by
the parties regarding infringement. Masimo’s assertion it will, “demonstrate at trial that
67
D.I. 501 at 19.
i4i Ltd. P’ship v. Microsoft Corp., 598 F.3d 831 (Fed. Cir. 2010).
69
K-Tec, Inc. v. Vita-Mix Corp., 696 F.3d 1364 (Fed. Cir. 2012).
70
i4i, 598 F.3d at 839.
71
Cordance Corp. v. Amazon.com, Inc., 639 F. Supp. 2d 406, 416 (D. Del. 2009), quoting
Seagate, 497 F.3d at 1371.
72
D.I. 501 at 8.
73
Bard, 682 F.3d at 1008.
74
D.I. 501 at 8.
68
12
Philips’ defenses are far more unreasonable than can be established in summary
judgment briefing” is irrelevant.75 Summary judgment on the objective prong is not
determined based upon what a party hopes to show at trial, but determined upon, “a
single backwards-looking inquiry into the reasonableness of the claims in light of the full
record.”76 As the infringement record has been fully developed, and in light of the
Federal Circuit’s decision in Bard,77 this court is not precluded from granting summary
judgment on the objective first prong of Seagate.
B.
Damages
Philips moves for summary judgment on the issue of lost profits damages. It
proffers two arguments in support: (1) Masimo fails to present any evidence concerning
Nonin PureSAT as an unacceptable alternative; and (2) Masimo’s damages expert, Mr.
Michael Wagner (“Wagner”), has no basis for his damages calculations regarding
sensor sales. For the following reasons, Philips’ motion for summary judgment is
denied.
1. An issue of material fact is present surrounding the acceptability
of Nonin PureSAT.
Philips argues, much as it did in its motion to exclude Dr. Timothy J. Quill
(“Quill”),78 Masimo fails to present any competent evidence presenting Nonin PureSAT
as an unacceptable non-infringing alternative. Philips correctly states Masimo bears the
burden of showing a lack of acceptable non-infringing alternatives.79 Philips once again
75
Id. at 9.
Highmark Inc. v. Allcare Health Mgmt. Sys., 687 F.3d 1300, 1310-11 (Fed. Cir. 2012), citing
iLOR, 631 F.3d at 1377-78.
77
Bard Peripheral Vascular, Inc., 682 F.3d at 1008.
78
D.I. 420.
79
Panduit Corp. v. Stahlin Bros. Fibre Works, Inc., 575 F.2d 1152 (6th Cir. 1978).
76
13
argues various purported flaws in Quill’s testimony: (1) Quill admits he does not know
what Philips’ customers deem acceptable; (2) his report relies explicitly on a lack of
evidence of acceptability; and (3) his supplemental report was untimely. The court has
already decided these issues with surgical precision.80 In regards to these arguments,
the court held: (1) Quill may only testify as to the acceptability standards of medical
professionals and hospitals, but not to those of Philips’ customers generally;81 (2) Quill
may testify a lack of evidence exists, but may not use any lack of evidence as proof of
unacceptability;82 and (3) Quill’s supplemental report is excluded in its entirety as
untimely.83
Philips raises a second argument claiming it has provided insurmountable
evidence regarding the acceptability of PureSAT.84 Philips claims its two experts, Drs.
Edward Ochroch and John Eichorn, all offer admissible testimony confirming
acceptability. This court recently analyzed their testimony and allowed nearly all
testimony regarding the acceptability of PureSAT, barring only statements concerning
FDA approvals.85 The court analyzes Philips’ motion in light of these recent rulings.
In order to succeed on its summary judgment motion, Philips must show there is
no genuine issue of material fact regarding the acceptability of Nonin PureSAT as a
non-infringing alternative. The evidence from both parties has primarily been conveyed
through its experts, which have all been limited in regards to this issue. However, no
80
Masimo Corp. v. Philips Electronics North America Corp., C.A. No. 09-80-LPS-MPT 2013 WL
2178047 (D. Del. May 20, 2013).
81
Id. at *10-11.
82
Id. at *11.
83
Id. at *11-12.
84
D.I. 425 at 13-15.
85
Masimo Corp., 2013 WL 2178047 at *8.
14
expert has been completely silenced. While Drs. Ochroch and Eichorn may still testify
on the acceptability of PureSAT, Dr. Quill may still testify as to its unacceptability among
medical professionals and hospitals. Masimo also presents evidence regarding Masimo
CEO Joe Kiani’s personal tests of PureSAT which convinced him PureSAT did not read
through motion.86 Similarly, David Baker, a Clinical Support Specialist at Masimo, offers
his experience with studies performed by Dr. Nitin Shah which also suggested Nonin
PureSAT failed to perform under motion conditions.87 The jury must decide the weight
given each piece of evidence. As the court has already ruled on the experts’
testimonies and allowed competing opinions regarding PureSAT’s acceptability, Philips’
motion for summary judgment is denied.
2. Wagner’s calculations were held sufficient to satisfy Rule 702.
Philips maintains Wagner failed to use reliable data in order to create the
percentages of sensor sales used in his report. This entire argument is a repeat of
Philips’ attempt to exclude Wagner’s expert testimony88 on the subject of sensor sales.89
This court recently decided all of the expert witness challenges in this litigation.90
Regarding Wagner’s calculation of sensor sales, this court held his data was reliable
and admissible under FED. R. EVID. Rule 702.91 Because the court has already ruled on
this issue, and because Wagner’s admissible testimony creates a genuine issue of
86
D.I. 494 (Kiani Decl.) at ¶6 (“In order to confirm that Nonin PureSAT could not measure through
motion, I tested Nonin PureSAT myself. I put on a Nonin monitor with PureSAT and ran it under motion
conditions. My test confirmed that Nonin PureSAT did not work at all during motion conditions.”)
87
D.I. 493 (Baker Decl.) at ¶¶1-3, Exs. 1 and 2 (Nitin Shah abstracts).
88
D.I. 422.
89
D.I. 423 at 4-8.
90
Masimo Corp., 2013 WL 2178047 (D. Del.).
91
Id. at 21.
15
material fact surrounding lost sensor sales, Philips’ motion for summary judgment is
denied.
III.
CONCLUSION
As examined above, Philips has presented legitimate and credible defenses to
the infringement claims, as well as presented credible invalidity arguments. As such,
Philips has “demonstrate[d] the lack of an objectively high likelihood that [Philips] took
actions constituting infringement of a valid patent.”92 Therefore, Philips’ motion for
summary judgment on willful infringement is granted.
Having ruled on all of the challenges to expert testimony, the court has
essentially already decided the outcome of the motion for summary judgment on
damages. Since the court will allow experts to testify to divisive positions on the
acceptability of Nonin PureSAT, as well as permit Wagner to present his sensor sale
analysis at trial, consequently Philips’ motion for summary judgment on damages is
denied.
VI.
Order and Recommended Disposition
Consistent with the findings contained in the Report and Recommendation,
IT IS RECOMMENDED that:
1. Philips’ motion for summary judgment on no willful infringement (D.I.426) is
GRANTED;
2. Philips’ motion for summary judgment on damages (D.I. 424) is DENIED.
Pursuant to 28 U.S.C. § 636(b)(1)(B), FED. R. CIV. P. 72 (a) and (b), and D. DEL.
92
Black & Decker, Inc. v. Robert Bosch Tool Corp., 260 F. App’x 284, 291 (Fed. Cir. 2008).
16
LR 72.1, any objections to the Report and Recommendation shall be filed within
fourteen (14) days limited to ten (10) pages after being served with the same. Any
response shall be limited to ten (10) pages.
The parties are directed to the Court’s Standing Order in Non-Pro Se Matters for
Objections Filed under FED. R. CIV. P. 72 dated November 16, 2009, a copy of which is
found on the Court’s website (www.ded.uscourts.gov.).
Date: June 14, 2013
/s/ Mary Pat Thynge
UNITED STATES MAGISTRATE JUDGE
17
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