Nox Medical Ehf v. Natus Neurology Inc.

Filing 252

MEMORANDUM ORDER: Plaintiff's Motion in Limine #1 is DENIED. Signed by Judge Richard G. Andrews on 4/26/2018. (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 ORDER

Presently before the Court is Plaintiffs Motion in Limine #1. (D.I. 235, Exh. G). On April
12, 2018, I requested the parties to "submit briefs with more pertinent authorities" and to "flesh[]
out whether there is any basis" for issue preclusion arising out of the PTAB's IPR review associated
with this case. (DJ. 240 at 1). They did so. (DJ. 248, 249, 250, 251).
For the reasons that follow, IT IS HEREBY ORDERED THAT Plaintiffs Motion is
DENIED. (DJ. 235, Exh. G.).

For issue preclusion, the Federal Circuit generally applies the law of the regional circuit in
which the district court sits. AbbVie Deutsch/and GbmH & Co. KG v. Janssen Biotech, Inc., 759
F.3d 1285, 1295 (Fed. Cir. 2014). In the Third Circuit, an issue is precluded where "(l) the
identical issue was previously litigated; (2) the issue was actually litigated; (3) the previous
determination was necessary to the decision; and (4) the party being precluded from relitigating the
issue was fully represented in the prior action." Jean Alexander Cosmetics, Inc. v. L 'Orea! USA,
Inc., 458 F.3d 244, 249 (3d Cir. 2006).

Plaintiff argues,
issue preclusion bars [Defendant] from presenting argument or evidence on four
issues: that (1) Figures 13 or 14 of Mcintire (or accompanying disclosure) teach a
conductor exiting a receiving hole, (2) it would have been obvious to modify Figure
14 of Mcintire so that the conductor exits the receiving hole, (3) there is a reasonable

interpretation of "wrapped around" that is broader than "following a path that
substantially surrounds and encloses," or (4) Figures 13 or 14 of Mcintire disclose a
conductor "wrapped around" an engaging member.
(D.I. 248 at 2).
As to the first issue, Defendant says it "does not intend to argue at trial that Figures 13 [and]
14 expressly disclose a conductor exiting a receiving hole," so the "issue raised in [Plaintiffs]
motion is moot." (D.I. 249 at 1). Because Defendant represents that this first issue is moot,
Defendant may not argue at trial that Figures 13 or 14 of Mcintire "teach a conductor exiting a
receiving hole," be it expressly or impliedly.
As to the second issue, Plaintiffs argument falls short. The PTAB was considering a
different group of prior references when determining it would not "have been obvious to modify
Figure 14 of Mcintire so that the conductor exits the receiving hole." (See D.I. 231 at p. 4).
Accordingly, an "identical issue" was not "previously litigated." Issue preclusion cannot apply.
As to the third and fourth issues, the PTAB concluded that the broadest reasonable
interpretation of "wrapped around" is "following a path that substantially surrounds and encloses."
(D.I. 231 at p. 15). However, it is too late for either party to be arguing about the proper claim
construction for "wrapped around." As a result, I need not decide whether Defendant is barred from
presenting argument on whether there is a reasonable interpretation of "wrapped around" that is
broader that "following a path that substantially surrounds and encloses," or Figures 13 or 14 of
Mcintire disclose a conductor "wrapped around" an engaging member.

Entered this~ day of April, 2018.

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