Nox Medical Ehf v. Natus Neurology Inc.

Filing 227

MEMORANDUM OPINION regarding pending motions for summary judgment (D.I. 136 , D.I. 156 ) and motions to exclude (D.I. 144 , D.I. 154 ). Signed by Judge Richard G. Andrews on 2/13/2018. (nms)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE

NOX MEDICAL EHF,
Plaintiff,
Civil Action No. 15-709-RGA

v.
NATUS NEUROLOGY INC.,
Defendant.

MEMORANDUM OPINION

Bindu A. Palapura, Esq., POTTER, ANDERSON & CORROON, Wilmington, Delaware; Chad
E. Nydegger, Esq. (argued), Brent P. Lorimer, Esq., WORKMAN NYDEGGER, Salt Lake City,
Utah.
Attorneys for Plaintiff.
Arthur G. Connolly, III, Esq., CONNOLLY GALLAGHER LLP, Wilmington, Delaware; Thomas
S. Reynolds, Esq. (argued), Jeremy Adelson, Esq. (argued), HANSEN REYNOLDS DICKINSON
& CRUEGER LLC, Milwaukee, Wisconsin; Joseph J. Jacobi, Esq., HANSEN REYNOLDS
DICKINSON & CRUEGER LLC, Chicago, Illinois.
Attorneys for Defendant.

February~,2018

Presently before the Court are Defendant's Motion for Summary Judgment of
Inv~lidity

of the Asserted Claims of U.S. Patent 9,059,532 (D.I. 136) and related briefing

(D.I. 137, 157, 175), Plaintiff's Cross-Motion for Summary Judgment of No Invalidity
and for Additional Claim Construction (D.I. 156) and related briefing (D.I. 157, 175,
198), Defendant's Motion to Exclude Opinions ofNox Medical EHF's Retained Expert,
Alan T. Oslan, Pursuant to Federal Rule of Evidence 702 (D.I. 144) and related briefing
(D.I. 145, 179, 200), and Plaintiff's Motion to Exclude Certain Opinions and Testimony
of Dr. Justin Williams That the Claims of U.S. Patent No. 9,059,532 are Invalid (D.I.
154) and related briefing (D.I. 155, 177, 202). I held oral argument on January 9, 2018.
(D.L 224).
For the reasons that follow, the Court will DENY Defendant's Motion for
Summary Judgment oflnvalidity (D.I. 136); DENY in part and GRANT in part
Plaintiff's Cross-Motion for Summary Judgment of No Invalidity and for Additional
Claim Construction (D.I. 156); DENY Defendant's Motion to Exclude Opinions ofNox
Medical EHF's Retained Expert, Alan T. Oslan, Pursuant to Federal Rule of Evidence
702 (D.I. 144); and DENY in part and GRANT in part Plaintiff's Motion to Exclude
Certain Opinions and Testimony of Dr. Justin Williams That the Claims of U.S. Patent
No. 9,059,532 are Invalid (D.I. 154).

I.

BACKGROUND
Defendant has stipulated that certain of its products infringe claims 1, 4, 5, 6, 7, 8,

and 9 of U.S. Patent No. 9,059,532. (D.I. 72). Defendant contends that Claims 1, 6, 7,
and 9 are invalid as anticipated by the Nox RES Belt; claims 4, 5, and 8 are invalid as

2

obvious based on combinations including the Nox RES Belt; and claims 6 and 7 are
invalid under§ 112(b) and (d). (D.1. 137 at 8-20). 1
Claim 1 is an independent claim and reads as follows:
1. An electrode belt and a belt connector for electrically connecting a conductor of the
electrode belt to a male portion of a snap connector electrode connected to a biometric
device, the belt connector comprising:
a molded plastic frame including a receiving hole having radial flexibility,
the receiving hole being configured to function as a female snap button
fastener for receiving and fastening the frame to a protrusion of the male
portion of the snap connector electrode,
a fastener configured to fasten the frame to a first end of said electrode belt,
and
an engaging member adjacent to said receiving hole, the engaging member
engaging the conductor of the electrode belt by the conductor passing
through the receiving hole while being wrapped around the engaging
member, such that when the male portion of the snap connector electrode
penetrates the receiving hole, the conductor is forced into physical contact
with at least a lateral surface of the male portion of the snap connector
electrode,
wherein radial flexibility of said receiving hole is achieved by one or more
slot[s] extending from said hole, and wherein said receiving hole and one
or more slot[s] are formed by at least one elongated member having
flexibility transverse to its longitudinal axis, thus imparting flexibility to the
width of the hole.
Claims 4 through 9 depend from claim 1. Claim 4 depends from "[t]he electrode
belt and the belt connector of claim l" and adds "wherein said belt connector comprises a
cover enclosing the frame, which cover either includes a hole overlapping the receiving
hole of the frame, or can be readily perforated by pressing the connector onto a male
fastener which fits the receiving hole of the frame." Claim 5 depends from "[t]he

1

All asserted claims are challenged as obvious in a PTAB Trial initiated on March 23,
2017. IPR 2016-01822. The argument there does not rely upon the N ox RES Belt.
3

electrode belt and the belt connector of claim 4" and adds "wherein said cover is selected
from the group consisting of a folded paper, plastic or fabric sticker, a plastic envelope
and a textile envelope." Claim 6 depends from "[t]he electrode belt and the belt
connector of claim l" and adds "wherein said fastening means comprise a slot with a row
of teeth, pins or hooks transverse to the belt direction, to engage a belt end." Claim 7
dept:;nds from "[t]he electrode belt and the belt connector of claim l" and adds "wherein
said fastening means comprise a ridge member of row of pins which lies transverse to the
belt direction and to which a belt end can be fastened onto with heat melting or gluing."
Claim 8 depends from "[t]he electrode belt and the belt connector of claim l" and adds
"wherein said belt connector comprises an adjustment slot with teeth, pin or hook
members, through which slot a loop of desired length of said belt can be inserted, to
adjust and fix the length of the belt." Claim 9 depends from "[t]he electrode belt and the
belt connector of claim l" and adds "wherein said belt is a flexible textile belt with an
electrode wire interwoven in the belt or laminated between two layers of the belt." (D.I.
138-1, Exh. A).

II.

LEGAL STAND ARD

A.

Summary Judgment
"The court shall grant summary judgment ifthe movant shows that there is no genuine

dispute as to any material fact and the movant is entitled to judgment as a matter oflaw." Fed.
R. Civ. P. 56(a). The moving party has the initial burden of proving the absence of a genuinely
disputed material fact relative to the claims in question. Celotex Corp. v. Catrett, 4 77 U.S. 317,
330 (1986). Material facts are those "that could affect the outcome" of the proceeding, and "a
dispute about a material fact is 'genuine' if the evidence is sufficient to permit a reasonable jury

4

to return a verdict for the nonmoving party." Lamont v. New Jersey, 637 F.3d 177, 181 (3d Cir.
2011) (quoting Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986)). When determining
whether a genuine issue of material fact exists, the court must view the evidence in the light most
favorable to the non-moving party and draw all reasonable inferences in that party's favor. Scott
v. Harris, 550 U.S. 372, 380 (2007); Wishkin v. Potter, 476 F.3d 180, 184 (3d Cir. 2007).

B.

Claim Construction
"It is a bedrock principle of patent law that the claims of a patent define the

invention to which the patentee is entitled the right to exclude." Phillips v. A WH Corp.,
415 F.3d 1303, 1312 (Fed. Cir. 2005) (en bane) (internal quotation marks omitted).
"' [T]here is no magic formula or catechism for conducting claim construction.' Instead,
the court is free to attach the appropriate weight to appropriate sources 'in light of the
statutes and policies that inform patent law."' Soft View LLC v. Apple Inc., 2013 WL
4758195, at *1 (D. Del. Sept. 4, 2013) (quoting Phillips, 415 F.3d at 1324) (alteration in
original). When construing patent claims, a court considers the literal language of the
claim, the patent specification, and the prosecution history. Markman v. Westview
Instruments, Inc., 52 F.3d 967, 977-80 (Fed. Cir. 1995) (en bane), aff'd, 517 U.S. 370

(1996). Of these sources, "the specification is always highly relevant to the claim
construction analysis. Usually, it is dispositive; it is the single best guide to the meaning
of a disputed term." Phillips, 415 F.3d at 1315 (internal quotation marks omitted).
"[T]he words of a claim are generally given their ordinary and customary
meaning. . . . [Which is] the meaning that the term would have to a person of ordinary
skill in the art in question at the time of the invention, i.e., as of the effective filing date
of the patent application." Id. at 1312-13 (citations and internal quotation marks

5

omitted). "[T]he ordinary meaning of a claim term is its meaning to [an] ordinary artisan
after reading the entire patent." Id. at 1321 (internal quotation marks omitted). "In some
cases, the ordinary meaning of claim language as understood by a person of skill in the
art may be readily apparent even to lay judges, and claim construction in such cases
involves little more than the application of the widely accepted meaning of commonly
understood words." Id. at 1314.
When a court relies solely upon the intrinsic evidence-the patent claims, the
specification, and the prosecution history-the court's construction is a determination of
law. See Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 841 (2015). The court
may also make factual findings based upon consideration of extrinsic evidence, which
"consists of all evidence external to the patent and prosecution history, including expert
and inventor testimony, dictionaries, and learned treatises." Phillips, 415 F.3d at 131719. Extrinsi.c evidence may assist the court in understanding the underlying technology,
the meaning of terms to one skilled in the art, and how the invention works. Id. Extrinsic
evidence, however, is less reliable and less useful in claim construction than the patent
and its prosecution history. Id.
'.'A claim construction is persuasive, not because it follows a certain rule, but
because it defines terms in the context of the whole patent." Renishaw PLC v. Marposs

Societa' per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998). It follows that "a claim
interpretation that would exclude the inventor's device is rarely the correct
interpretation." Osram GMBHv. Int'! Trade Comm 'n, 505 F.3d 1351, 1358 (Fed. Cir.
2007) (citation omitted).

6

C.

Invalidity Under 35 U.S.C. § 102
"To show that a patent claim is invalid as anticipated, the accused infringer must show by

clear and convincing evidence that a single prior art reference discloses each and every element
of a claimed invention." Silicon Graphics, Inc. v. AT! Tech., Inc., 607 F.3d 784, 796 (Fed. Cir.
2010). "[E]very element of the claimed invention [must be described], either expressly or
inherently, such that a person of ordinary skill in the art could practice the invention without
undue experimentation." Callaway Golf Co. v. Acushnet Co., 576 F.3d 1331, 1346 (Fed. Cir.
2009). As with infringement, the court construes the claims and compares them against the prior
art. See Enzo Biochem, Inc. v. Applera Corp., 599 F.3d 1325, 1332 (Fed. Cir. 2010). "While
anticipation is a question of fact, it may be decided on summary judgment if the record reveals
no genuine dispute of material fact." Encyclopaedia Britannica, Inc. v. Alpine Elecs. ofAm.,

Inc., 609 F.3d 1345, 1349 (Fed. Cir. 2010).

D.

Invalidity Under 35 U.S.C. § 103
A patent claim is invalid as obvious under 35 U.S.C. § 103 "if the differences

between the claimed invention and the prior art are such that the claimed invention as a
whole would have been obvious before the effective filing date of the claimed invention
to a person having ordinary skill in the art to which the claimed invention pertains." 35
U.S.C. § 103; see also KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406-07 (2007).
"Under§ 103, the scope and content of the prior art are to be determined; differences
between the prior art and the claims at issue are to be ascertained; and the level of
ordinary skill in the pertinent art resolved. Against this background, the obviousness or
nonobviousness of the subject matter is determined." KSR, 550 U.S. at 406 (internal
citation omitted).

7

A court is required to consider secondary considerations, or objective indicia of
nonobviousness, before reaching an obviousness determination, as a "check against
hindsight bias." See In re Cyclobenzaprine Hydrochloride Extended-Release Capsule

Patent Litig., 676 F.3d 1063, 1078-79 (Fed. Cir. 2012). "Such secondary considerations
as commercial success, long felt but unsolved needs, failure of others, etc., might be
utilized to give light to the circumstances surrounding the origin of the subject matter
sought to be patented." Graham v. John Deere Co. ofKansas City, 383 U.S. 1, 17-18
(1966). Where "the content of the prior art, the scope of the patent claim, and the level of
ordinary skill in the art are not in material dispute, and the obviousness of the claim is
apparent in light of these factors, summary judgment is appropriate." KSR, 550 U.S. at
427.

E.

Invalidity Under 35 U.S.C. § 112(b)
"[A] patent is invalid for indefiniteness if its claims, read in light of the

specification delineating the patent, and the prosecution history, fail to inform, with
reasonable certainty, those skilled in the art about the scope of the invention." Nautilus,

Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2124 (2014).

F.

Daubert

Federal Rule of Evidence 702 sets out the requirements for expert witness testimony and states:
A witness who is qualified as an expert by knowledge, skill,
experience, training, or education may testify in the form of an
opinion or otherwise if: (a) the expert's scientific, technical, or other
specialized knowledge will help the trier of fact to understand the
evidence or to determine a fact in issue; (b) the testimony is based
on sufficient facts or data; (c) the testimony is the product of reliable
principles and methods; and (d) the expert has reliably applied the
principles and methods to the facts of the case.
Fed. R. Evid. 702. The Third Circuit has explained:
8

Rule 702 embodies a trilogy of restrictions on expert testimony:
qualification, reliability and fit.
Qualification refers to the
requirement that the witness possess specialized expertise. We have
interpreted this requirement liberally, holding that "a broad range of
knowledge, skills, and training qualify an expert." Secondly, the
testimony must be reliable; it "must be based on the 'methods and
procedures of science' rather than on 'subjective belief or
unsupported speculation'; the expert must have 'good grounds' for
his o[r] her belief. In sum, Daubert holds that an inquiry into the
reliability of scientific evidence under Rule 702 requires a
determination as to its scientific validity." Finally, Rule 702
requires that the expert testimony must fit the issues in the case. In
other words, the expert's testimony must be relevant for the
purposes of the case and must assist the trier of fact. The Supreme
Court explained in Daubert that "Rule 702's 'helpfulness' standard
requires a valid scientific connection to the pertinent inquiry as a
precondition to admissibility."
By means of a so-called "Daubert hearing," the district court acts as
a gatekeeper, preventing opinion testimony that does not meet the
requirements of qualification, reliability and fit from reaching the
jury. See Daubert ("Faced with a proffer of expert scientific
testimony, then, the trial judge must determine at the outset,
pursuant to Rule 104(a) [of the Federal Rules of Evidence] whether
the expert is proposing to testify to (1) scientific knowledge that (2)
will assist the trier of fact to understand or determine a fact in
issue.").

Schneider ex rel. Estate ofSchneider v. Fried, 320 F.3d 396, 404-05 (3d Cir. 2003) (footnote and
internal citations omitted). 2

III.

DISCUSSION

A.

Claim Construction
1.

"the receiving hole being configured to function as a female snap button
fastener for receiving and fastening the frame to a protrusion of the male
portion of the snap connector electrode"
i. Plaintiff's proposed construction:

2

The Court of Appeals wrote under an earlier version of Rule 702, but the recent
amendments to it were not intended to make any substantive change.
9

Plain and ordinary meaning: The plastic defining the receiving
hole must be able to receive and fasten to a protrusion of the male
portion of the snap connector electrode for which the belt
connector has been designed. (D .I. 157 at 18-24; D .I. 198 at 4-7).
In doing so, the receiving hole must function like a "female snap
button fastener." (D.I. 138-4 at i! 136).
ii. Defendant's proposed construction:
Plain and ordinary meaning: A roughly cylindrical space
configured to or capable of functioning as a female snap button
fastener. (D.I. 78 at 7 (Court defining "receiving hole"); D.I. 175
at 13).
m. Court's construction: The plastic defining the receiving hole must be
able to receive and fasten to a protrusion of the male portion of the
snap connector electrode for which the belt connector has been
designed.
The parties submitted claim construction proposals on January 18, 2018. (D .I.
226).
Claim 1 of the '532 patent requires, among other things, a "receiving hole being
configured to function as a female snap button fastener for receiving and fastening the
frame to a protrusion of the male portion of the snap connector electrode."
This limitation of claim 1 does not require merely any "female snap button
fastener." Rather, the plain language of claim 1 indicates that the "receiving hole" itself,
as opposed to a wire spring loop or some other device, must be configured to function as
a "female snap button fastener for receiving and fastening the frame to a protrusion of the
male portion of the snap connector electrode." Furthermore, the claim requires that the
"receiving hole" has "radial flexibility." Unless the plastic defining the "receiving hole"
itself "receiv[es] and fasten[ s] the frame to" the electrode, the "radial flexibility"
limitation adds nothing to the claim. Accordingly, the plastic defining the receiving hole

IO

must itself be able to receive and fasten to "a protrusion of the male portion of the snap
connector electrode."
Claim 1 further requires that the receiving hole receives and fastens the frame
specifically to the male snap electrode for which the belt connector has been designed.
The claim requires that the "receiving hole" is "configured to function as a female snap
button fastener for receiving and fastening the frame [of the belt connector] to a
protrusion of the male portion of the snap connector electrode." (Emphasis added). This
limitation therefore refers to the preamble, which covers, "An electrode belt and a belt
connector for electrically connecting a conductor of the electrode belt to a male portion

of a snap connector electrode connected to a biometric device." (Emphasis added).
Therefore, the receiving hole must be capable of "receiving and fastening the frame" to
that electrode, for which the belt connector has been designed.
In light of both requirements, I construe the term to require that "the plastic
defining the receiving hole must be able to receive and fasten to a protrusion of the male
portion of the snap connector electrode for which the belt connector has been designed."
2. "elongated member"
1.

Plaintiff's proposed construction:
Plain and ordinary meaning: A distinct portion of the molded
plastic frame that is longer than it is wide. (D.I. 157 at 28-30; D.I.
198 at 9-10).

IL

Defendant's proposed construction:
Plain and ordinary meaning: A structure that is longer than it is
wide. (D.1. 175 at 14).

111.

Court's construction: Structure that is longer than it is wide.

11

The parties agree that an "elongated member" is "longer than it is wide." (D.I.
226). They disagree as to whether it is "a distinct portion of the molded plastic frame."
Claim 1 specifies that an elongated member "ha[ s] flexibility transverse to its
longitudinal axis, thus imparting flexibility to the width of the hole." The specification
further provides that this "flexibility" must be "sufficient" for the hole "to function as a
female snap fastener." ('532 patent at 5: 18-20).
The '532 patent's claim language and specification do not teach that an
"elongated member" must be "distinct," nor do they give any indication as to how a
"distinct" member might distinguished from a "non-distinct" member. Rather, the patent
specification provides two embodiments of the invention, which include "elongated
members" that Plaintiff argues are "distinct." (D.I. 138-1, Exh. A at 4-7; D.I. 157 at 2830).
The Federal Circuit has "cautioned against reading limitations into a claim from
the preferred embodiment described in the specification, even if it is the only
embodiment described." In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1369-70 (Fed.
Cir. 2004). Here, any disclosure that an "elongated member" must be "distinct" appears
in a preferred embodiment of the patent, as opposed to a teaching. Furthermore, even
within those embodiments, there is no direct indication that the elongated members are
"distinct," nor is there a workable definition of "distinct." Accordingly, Plaintiff's
proposed "distinct" limitation cannot be read into claim 1 of the '532 patent.
I instead adopt the parties' agreed-upon requirement that an "elongated member"
is a "structure that is longer than it is wide" as my construction.
3. "a conductor of the electrode belt"

12

1.

Plaintiff's proposed construction:
Plain and ordinary meaning: A wire that is at least partially located
in the electrode belt, of which the belt connector is not a part. A
wire that is located wholly outside of the electrode belt (e.g.
located only in the belt connector) does not qualify. (D.I. 157 at
25-27; D.I. 198 at 7-9).

11.

Defendant's proposed construction:
Plain and ordinary meaning: A conductor associated with, related
to, belonging to, etc., the electrode belt, of which the connector is a
part. (D.I. 175 at 42).

m. Court's construction ("electrode belt"): The electrode belt and the belt
connector are different parts of the claimed invention.
iv. Court's construction ("a conductor of the electrode belt"): A
"conductor of the electrode belt" is a conductor that is at least partially
located in the electrode belt.
The preamble of claim 1 of the '532 patent explains that the invention is, "An
electrode belt and a belt connector for electrically connecting a conductor of the electrode
belt to a male portion of a snap connector electrode connected to a biometric device."
The claim then sets forth requirements for the "belt connector," namely, that the
"engaging member engag[es] the conductor of the electrode belt by the conductor passing
through the receiving hole while being wrapped around the engaging member, such that
when the male portion of the snap connector electrode penetrates the receiving hole, the
conductor is forced into physical contact with at least a lateral surface of the male portion
of the snap connector electrode." ('532 patent, claim 1).
The parties' disagreement centers on whether the term "electrode belt" must
encompass the "belt connector." (D.I. 175 at 42; D.I. 198 at 25-27).
The '532 patent claims refer to the "electrode belt" and "belt connector" as
separate entities. Thus, Plaintiff argues, the "connector" is not part of the "electrode
13

belt." (D.I. 198 at 25-27). However, Defendant argues that the '532 patent at times uses
the terms "belt" and "electrode belt" to refer to the entire assembly, including both the
"belt connector" and belt material, and that Plaintiffs expert does the same. (D.I. 175 at
42).
By covering both an "electrode belt" and a "belt connector," the language of
independent claim 1 and dependent claims 2-9 indicates that the "electrode belt" and
"belt connector" are different parts of the claimed invention. (' 532 patent, claims 1-9).
Figures 2A, 2B, and 2C "illustrate a belt connector and connected belt," further indicating
that the "electrode belt" and the "belt connector" are different entities. (' 532 patent, Figs.
2A-2C, 2:9-10). I therefore construe "electrode belt" to clarify that the electrode belt and
the belt connector are different parts of the claimed invention.
The parties' constructions indicate that they essentially agree that the "conductor
of the electrode belt" must be at least partially located in the "electrode belt." Thus, I
construe "conductor of the electrode belt" to be conductor that is at least partially located
in the "electrode belt."
My construction does not necessarily exclude the possibility that a wire that is
located wholly outside of the electrode belt, but is soldered to the wire that runs through
the electrode belt, is part of the "conductor." That is a question for the jury.

B.

Nox RES Belt
Defendant argues that claim 1 of the '532 patent is anticipated by the Nox RES

Belt. (D.I. 137 at 15). Claim 1 requires a "receiving hole being configured to function as
a female snap button fastener for receiving and fastening the frame to a protrusion of the
male portion of the snap connector electrode." I construed this limitation to require that

14

the "plastic defining the receiving hole must be able to receive and fasten to a protrusion
of the male portion of the snap connector electrode for which the belt connector has been
designed."
Plaintiff asserts that the Nox RES Belt does not embody the "receiving hole"
requirement, as the plastic defining the receiving hole does not itself fasten to a
protrusion of the male portion of the snap connector electrode for which the belt
connector has been designed. Instead, Plaintiff argues, a wire spring loop performs the
fastening, and absent its presence, "the female plastic connector simply falls off the male
snap electrode when it is turned upside down; the female snap does not exert any
retention force on the male snap," indicating that the hole itself does not perform any
fastening function. (D.I. 157 at 18-25; D.I. 138-4 at iJ 41).
As such, the Nox RES Belt does not contain a "receiving hole being configured to
function as a female snap button fastener for receiving and fastening the frame to a
protrusion of the male portion of the snap connector electrode." Thus, claim 1 is not
anticipated by the Nox RES Belt. Dependent claims 6, 7, and 9 are also not anticipated
by the Nox RES Belt, as the same "receiving hole" limitation underlies those claims.
Accordingly, Defendant's Motion for Summary Judgment oflnvalidity of the Asserted
Claims of U.S. Patent No. 9,059,532 is denied as to anticipation by the Nox RES Belt,
and Plaintiffs Cross-Motion for Summary Judgment of No Invalidity and for Additional
Claim Construction is granted as to anticipation by the Nox RES Belt. 3

3

Although unnecessary to resolve this motion, I note that whether the prior art contains
an "elongated member" is a question of fact for the jury.
15

Defendant proffers arguments that claims 4, 5, and 8 are invalid as obvious.
Those arguments involve additional references that disclose adjustments and covers,
which, it is asserted, make the extra limitations of the dependent claims obvious. (D.I.
137 at 15-16, 19-20). The same "receiving hole" limitation underlies each combination
proffered by Defendant. As a result, Defendant's Motion for Summary Judgment of
Invalidity of the Asserted Claims of U.S. Patent No. 9,059,532 is denied as to whether
claims 4 and 5 are rendered obvious by the Nox RES Belt and Mcintire and whether
claim 8 is rendered obvious by the Nox RES Belt and Abizaid or Orewiler.
C.

Indefiniteness

Defendant also argues that claims 6 and 7 are invalid as indefinite under 35
U.S.C. § 112(b) because the claims do not "particularly point[] out and distinctly claim[]
the subject matter which the applicant regards as his invention." (D.I. 137 at 16-17).
Claims 6 and 7 depend from claim 1, which refers to a "fastener." Claims 6 and 7 do not
refer to a "fastener," but they do refer to "said fastening means." (D .I. 13 8-1, Exh. A). A
person skilled in the art would recognize "said fastening means" as referring to the
"fastener" of claim 1, and as such, would be informed "about the scope of the invention
with reasonable certainty." See Nautilus, Inc., 134 S. Ct. at 2124. First, the specification
of the '532 patent teaches that the "fastening means" and corresponding structure fasten
the connector to an end of a belt, just as claim 1 teaches that a "fastener" is configured to
fasten the frame to an end ofa belt. (D.I. 138-1at1:32-34, 3:40-46, 5:9-13). Likewise,
the prosecution history shows that the "fastening means" in claim 1 was amended to a
"fastener," but that the amendment was inadvertently not carried through to claims 6 and

16

7. (D.I. 160-1, Exh. 32). Accordingly, Defendant's Motion for Summary Judgment of
Invalidity is denied as to the§ 112(b) argument. 4

D.

Hermannsson Reference
Plaintiff's Cross-Motion for Summary Judgment of No Invalidity and for

Additional Claim Construction raises the issue of whether U.S. Patent No. 8,025,539
("the Hermannsson reference") is prior art to the '532 patent for use in combination with
other references.
Pre-AIA 35 U.S.C. § 103(c) dictates that "[s]ubject matter developed by another
person, which qualifies as prior art under one or more subsections (e), (f), and (g) of
section 102, shall not preclude patentability under[§ 103] where the subject matter and
the claimed invention were, at the time the claimed invention was made, owned by the
same person or subject to an obligation of assignment to the same person." 35 U.S.C. §
103(c)(l) (pre-AIA).
Plaintiff argues that the Hermannsson reference and the '532 patent were both
subject to an obligation of assignment to Plaintiff at the "time the claimed invention was
made" such that the Hermannsson reference cannot preclude patentability of the '532
patent under§ 103. (D.I. 157 at 15-17). The "claimed invention" is the '532 patent, and

4

Defendant's contention that Claims 6 and 7 are unpatentable under 35 U.S.C. § 112(d)
fails. The case Defendant cites, Pfizer, Inc. v. Ranbaxy Labs. Ltd., 457 F.3d 1284 (Fed. Cir.
2006), refers to a situation where claim 6 depended from claim 2, which in turn depended from
claim 1. There, claim 6 referred to a limitation present only in claim 1, meaning that claim 6 and
claim 2-from which claim 6 purported to depend-dealt with "non-overlapping subject matter"
in violation of§ 112(d)'s mandate that a dependent claim "incorporate by reference all the
limitations of the claim to which it refers" and "then specify a further limitation of the subject
matter." Id. at 1291. No such problem exists here; instead, Defendant seeks to use§ 112(d)'s
language to double down on its§ 112(b) antecedent basis argument. Thus, Defendant's Motion
for Summary Judgment oflnvalidity is also denied as to the§ l 12(d) argument.
17

it "was made" between October 16, 2009 and November 27, 2009. (D.I. 159-1, Exh. 15
at 8). The parties do not dispute that the '532 patent and the Hermannsson reference were
not "owned by the same person" "at the time the claimed invention was made."
Sveinbjom Hoskuldsson, a co-inventor of the '532 patent, and Kormakur
Hermannsson, the sole inventor of the Hermannsson reference and the other co-inventor
of the '532 patent, did not have employment contracts requiring them to assign either
invention to Plaintiff at "the time the claimed invention was made." Rather, their
employment contracts were formed after "the time the claimed invention made" and were
merely prospective. (D.I. 175 at 1O; D.I. 157 at 16-17). Thus, those contracts did not
create an obligation to assign either invention to Plaintiff at "the time the claimed
invention was made." See, e.g., Indus. Tech. Research Institute v. Pacific Biosciences of
California, Inc., 640 Fed. App'x 871, 883 (Fed. Cir. 2016) (holding that evidence oflater
assignment or common ownership does not establish the necessary common ownership at
the time of the invention).
Further, the inventors assigned Plaintiff their rights to the inventions after the
"time the claimed invention was made": Mr. Hermannsson assigned his rights in the
Hermannsson reference to Plaintiff on May 15, 2010, and he assigned his rights in the
'532patenttoPlaintiffonMarch 12,2013. (D.I.157at5,16;D.I.159-l,Exh.16atif6;
D.I. 159-1, Exh. 16 at if 7). Mr. Hoskuldsson assigned his rights in the '532 patent to
Plaintiff on January 12, 2016. (D.1. 159-1, Exh. 17 at if 5). Just as the later employment
contracts do not establish that common ownership or an obligation of assignment existed
at the "time the claimed invention was made," these later assignments cannot establish a
common ownership or obligation of assignment at that time.

18

The parties dispute whether Icelandic Law Act No. 7212004 created an
"obligation of assignment" to Plaintiff on behalf of the inventors under pre-AIA § 103(c)
such that the Hermannsson reference does not qualify as prior art for purposes of an
obviousness analysis.
The parties agree that Icelandic Law Act No. 72/2004 "requires an employeeinventor to present an invention to his employer for consideration, providing the
employer with a right of first refusal to acquire rights in the invention." (D.I. 175 at 11;
D.I. 198 at 2). They disagree only as to whether Plaintiff's statutory right of first refusal
obliged Mr. Hermannsson and Mr. Hoskuldsson to assign their inventions to Plaintiff.
Defendant says that an employee's statutory duty to assign arises only after an
employee presents the invention to the employer and after the employer advises the
employee of its desire to acquire the right to the invention. (D .I. 17 5 at 11; D .I. 160-1,
Ex. 27 at 2-3; Ex.Ji! 10, at 3). Defendant says Plaintiff has identified no record evidence
that the inventors presented the invention to Plaintiff or that Plaintiff advised them of its
desire to acquire the rights. (D.I. 175 at 11).
Plaintiff responds that Defendant seeks to characterize what is actually an
obligation of assignment as "an obligation to present the invention to the employer."
(D .I. 198 at 2). But, Plaintiff says, the right of first refusal in the Icelandic statute dictates

that "the employee must assign the invention if the employer demands it." (Id.). In that
event, the employee has an "obligation" to assign, argues Plaintiff. Thus, Plaintiff
characterizes the law as creating a "conditional obligation of assignment" triggered by the
employer's demand. (D.I. 198 at 2-3). Plaintiff also cites the legislative history of§
103(c), which shows that the statute was meant to disqualify as prior art "background

19

scientific or technical information known within an organization but unknown to the
public." (D.I. 198 at 3; Cong. Rec. H10527 (Oct. 1, 1984)).
Even if the right of first refusal created by the Icelandic statute is
characteristically the same as an obligation of assignment, any obligation Mr.
Hermannsson had to assign the Hermannsson reference to Plaintiff expired before "the
time the claimed invention was made."
Article 4 of Icelandic Law Act No. 72/2004 provides that "[i]n case an employee
has presented an invention being within the scope of his work an employer may require
conveyance of the right covering the invention himself, provided that utilization thereof
be within the employer's field ofwork." 5 (D.I. 160-1, Exh. 27). Articles 5 and 6 provide
that the employee should "without undue delay give the employer notice in a verifiable
manner of the invention," and upon that notice, "[i]n case an employer desire[s] to
acquire the right to an invention in accordance with Art[icle] 4 he shall advise the
employee accordingly within three months .... " (Id.).
Mr. Hermannsson, the co-founder, co-owner, Director of Supply Chain, and
acting mechanical designer of Nox, filed a provisional patent application for the
Hermannsson reference on May 15, 2009. (D.I. 157 at 4; D.I. 159-1, Exh. 16 at if 3-6;
D.I. 203-1, Exh. 70). Given Mr. Hermannsson's roles at Plaintiff, particularly being a coowner, this application demonstrates Plaintiff received the requisite "verifiable" "notice"
of the invention no later than May 15, 2009. The statute required Plaintiff to advise Mr.
Hermannsson of its "desire to acquire the right to [the] invention ... within three

5

Defendant provides a different translation of the statute, which leads to the same result.
(D.I. 175-10, Exh. J).
20

months" of this date, but Mr. Hermannsson did not assign Plaintiff the Hermannsson
reference during this statutory three month period. 6 Thus, any obligation of assignment
held by Mr. Hermannsson had expired by the "time the ['532 patent] was made" five
months later, between October 16 and November 27, 2009. (D.I. 159-1, Exh. 15).
Accordingly, the Hermannsson reference is prior art for § 103 purposes. I will
deny that portion of Plaintiffs Cross-Motion for Summary Judgment of No Invalidity
and for Additional Claim Construction. (D.I. 156).

E.

Plaintiff's Cross-Motion for Summary Judgment of No Invalidity
Plaintiff asserts that Defendant has asserted that the only independent claim of the patent

is "anticipated by three references and would have been rendered obvious by twenty-three
different combinations of references involving seven different primary references and five
secondary references." (D.1. 157 at 2 (citing D.I. 138-3, the 197-page Dr. Williams report)).
Based on the headings in Dr. Williams' report, he says Claim 1 is anticipated by Hermannsson,
the 2009 CareFusion Catalog, and the Nox RES Belt, and that it is made obvious by the
combinations of (1) the Nox PRIP (Metal Snap) Belt and the Nox RES Belt, (2) Mcintire and
Hermannsson, (3) Mcintire and the Nox RES Belt, (4) Mcintire and the Nox PRIP (Metal Snap)
Belt, (5) Harhen and Hermannsson, (6-11) (Mcintire or Harhen) and (Kristbjarnarson or
Linville or Uehara), (12 - 13) Hermannsson and (Lawrence or Sommer), (14- 15) the 2009
CareFusion Catalog and (Lawrence or Sommer), (16-21) Gobron and (Lawrence or Sommer)

6

Hermannsson assigned the reference to Plaintiff on May 15, 2010. (DJ. 159-1, Exh. 16

at if 6).
21

and (Kristbjamarson, Linville, or Uehara). 7 The arguments about claim 1 are the first third of the
expert report; the other two-thirds deals with the asserted dependent claims.
I am going to deny Plaintiffs Cross-Motion for Summary Judgment of No Invalidity,
with the exception of anticipation by the Nox RES Belt, as explained above. I do so because
Plaintiff raises so many issues that most of them are at best cursorily briefed. Plaintiff may have
some valid arguments buried amongst its many conclusorily-supported arguments, but they are
sufficiently well-hidden that I do not see them. If history is any guide, Defendant will drop most
of its invalidity arguments, and Plaintiff will drop most of its no invalidity counter-arguments.
There are only so many arguments that a party can make in the time allotted, and most trial
lawyers know that juries react to a plethora of arguments about the same way that judges do, that
is, the party making the arguments is grasping at straws. When the parties do not recognize this,
upon application the Court will usually limit the number of asserted claims or the number of
asserted prior art references or the number of asserted obvious combinations, the last of which
seems to be the issue in this case.
F.

Daubert Motions

Defendant seeks to preclude Plaintiffs expert Mr. Alan T. Oslan from testifying
about secondary considerations of non-obviousness given that his report comprises
"cherry picked" facts and data provided to him by Nox, rather than any actual expert
opinion; providing ?Pinions about obviousness of the asserted claims given his improper
methodology; and providing opinions about insertion and extraction forces for the prior
art Nox RES Belt given that the opinions are unreliable and irrelevant. (D.I. 145).

7

I think Plaintiff gets to twenty-three obvious combinations by counting the Gobron
combinations differently than I would.

22

Plaintiff seeks to preclude Defendant's expert Dr. Justin T. Williams from
testifying that a general market demand for a "low cost, mass-producible electrode belt"
would have motivated a person of ordinary skill in the art to combine elements from the
prior art into the claimed combinations; testifying about combining features of the
Mcintire reference, given that he has no valid motivation to combine those features; and
providing anticipation and obviousness theories that are based upon incorrect claim
constructions. (D.I. 154).
I am going to deny both motions. Neither motion makes a serious case to exclude expert
testimony on the basis of "qualification, reliability, and fit." See Schneider ex rel. Estate of

Schneider, 320 F.3d at 404-05.
As to Defendant's arguments, Defendant can object at trial to any improper factual
testimony by Mr. Oslan, and Defendant can cross-examine Mr. Oslan about any insufficient
documentation of his testing of insertion and extraction forces. Separately, Mr. Oslan's opinions
about obviousness of the asserted claims use proper methodology. Because Defendant does not
argue that an element of the claims of the '532 patent is an obvious modification of a claim in the
prior art, to render a claim invalid as obvious requires showing that the argued prior art
combination teaches every element of the challenged claim. Par Pharm. Inc. v. Twi Pharms.,

Inc., 773 F.3d 1186, 1194 (Fed. Cir. 2014) ("We first must determine whether [the accused
infringer] carried its burden to prove that all claimed limitations are disclosed in the prior art")
(citing Medichem. S.A. v. Rolabo, S.L., 437 F.3d 1157, 1164 (Fed. Cir. 2006)). Thus, Plaintiffs
expert can defeat combinations by showing missing elements. (D.I. 179 at 12-14).

23

Plaintiffs arguments about Dr. Williams' testimony about general market demand and
combining features of the Mcintire reference amount to failure of proof arguments, rather than
Daubert arguments. Plaintiff can address them in cross-examination at trial.

However, Dr. Williams' opinion that the Nox RES Belt contains the "receiving
hole" limitation does not require the "receiving hole" to "fasten" to the male snap
electrode for which the belt connector has been designed. (D.I. 155 at 14; D.I. 138-3,
Exh. Cat 12-14). My claim construction for the "receiving hole" limitation requires the
plastic defining the receiving hole to itself fasten to a protrusion of the male portion of
the snap connector electrode for which the belt connector has been designed. As a result,
I am finding no genuine dispute of material fact that the Nox RES Belt does not contain
the "receiving hole" limitation, and granting Plaintiffs Cross-Motion for Summary
Judgment of No Invalidity and for Additional Claim Construction as to anticipation by
the Nox RES Belt. Thus, Dr. Williams cannot testify that the Nox RES Belt embodies
the "receiving hole" limitation.
IV.

CONCLUSION

A separate order will be entered.

24