Zimmer Surgical, Inc. et al v. Stryker Corporation et al
Filing
437
MEMORANDUM OPINION. Signed by Judge Richard G. Andrews on 3/7/2019. (nms)
IN THE UNITED STATES DISTRJCT COURT
FOR THE DISTRJCT OF DELAWARE
ZIMMER SURGICAL, INC. and DORNOCH
MEDICAL SYSTEMS, INC.,
Plaintiffs;
V.
STRYKER CORPORATION and STRYKER
SALES CORPORATION,
Defendants and
Counterclaim Plaintiffs;
Civil Action No. 16-679-RGA
V.
ZIMMER, INC. , ZIMMER SURGICAL, INC. ,
DORNOCH MEDICAL SYSTEMS, INC. , and
ZIMMER U.S., INC. ,
Counterclaim Defendants.
MEMORANDUM OPINION
Frederick L. Cottrell, III and Christine D. Haynes, RJCHARDS, LAYTON & FINGER LLP,
Wilmington, DE; J. Michael Jakes (argued), Kathleen A. Daley (argued), Susan Y. Tull,
Benjamin A. Saidman, and Scott A. Allen (argued), FINNEGAN, HENDERSON, FARABOW,
GARRETT & DUNNER, LLP, Washington, DC, attorneys for Plaintiffs and Counterclaim
Defendants.
Anne Shea Gaza and Samantha G. Wilson, YOUNG CONAWAY STARGATT & TAYLOR, LLP,
Wilmington, DE; Robert A. Surrette (argued), Sandra A. Frantzen (argued), Deborah A.
Laughton, Ryan Pianetto, and Bryce Persichetti, MCANDREWS, HELD & MALLOY, LTD,
Chicago, IL, attorneys for Defendants and Counterclaim Plaintiffs.
March
2,
2019
Currently pending before the Court are the parties' motions for summary judgment (D.I.
309, 310, 311 , 312, 313, 316, 356, 411) and Daubert motions to exclude expert testimony and
opinions. (D.I. 317, 321 , 322, 327). The parties have fully briefed the issues (D.I. 314, 318, 320,
323 , 324, 328, 351 , 353,355 , 359, 360, 361 , 386, 387, 389, 391 , 392, 393 , 411 , 413 , 415). The
Court heard helpful oral argument on January 22, 2019. (D.I. 417).
I.
BACKGROUND
On August 8, 2016, Zimmer Surgical, Inc. and Dornoch Medical Systems, Inc.
(collectively, "Zimmer") filed suit against Stryker Corporation and Stryker Sales Corporation
(collectively, "Stryker") for infringement of U.S. Patent No. RE 44,920 ("the ' 920 patent").
(D.I. 1). On May 22, 2018, Stryker filed counterclaims against Zimmer Surgical, Inc., Dornoch
Medical Systems, Inc. , Zimmer Inc., and Zimmer U.S. Inc. (also collectively, "Zimmer") for
infringement of U.S. Patent No. 9,579,428 ("the ' 428 patent") which was applied for and issued
during the pendency of this suit. (D.I. 251).
The ' 920 patent is a reissue of U.S. Patent No. 7,892,420 ("the ' 420 patent"). It issued on
June 3, 2014 and is directed to a fluid waste management system combining a movable waste
fluid collection cart with a waste fluid disposal unit. The ' 920 patent claims priority to U.S .
Patent No. 6,893,425 ("the ' 425 patent"). The ' 420 patent was filed as a continuation-in-part of
the application for U.S. Patent No. 7,258,711 ("the ' 711 patent"). The ' 71 1 patent was filed as a
divisional of application no. 10/090,221 on March 4, 2002, which issued as U.S Patent No.
6,893,425 ("the ' 425 patent"). The application for the '425 patent was published as Publication
No. US 2003/0164600 ("the ' 600 publication").
1
In 2013 , Domoch sought to reissue the '420 patent and add new claims 15-41. These
reissue claims are directed to a "system for handling waste fluid" that has two containers, each
"being configured to collect liquid waste from the patient." ('920 patent, els. 15, 29). Zimmer
asserts only new reissue claims' against Stryker. Zimmer alleges that Stryker's NepturJe 2 and
Neptune 3 waste collection systems infringe the '920 patent.
The '428 patent issued on February 28, 2017 during the pendency of this litigation. The
'428 patent is directed to a waste collection system with a removable intake manifold that
prevents the release of uncollected waste still in the manifold. ('428 patent col. 1:31-37).
Stryker accuses Domoch's Transposal® UltrafleX Fluid Waste Management System ("the
Ultraflex system") and IntelliCart system of infringing claims 1-6, 10, 14-16, 20, 23 -25, 28 and
29 of the '428 patent. (D.I. 359 at vii).
The parties now move for summary judgment on a multitude of issues (D.I. 309,310,
311 , 312, 313, 316, 3 56) and for exclusion of certain expert testimony and opinion (D .I. 31 7,
321 , 322, 327).
II.
LEGAL STAND ARD
A. Summary Judgment
"The court shall grant summary judgment if the movant shows that there is no genuine
dispute as to any material fact and the movant is entitled to judgment as a matter 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, 477 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
1
' 920 patent, els. 15 , 17-21 , 24, 27-30, 32-36 and 39. (See D.I. 359 at vii).
2
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)). The burden on the
moving party may be discharged by pointing out to the district court that there is an absence of
evidence supporting the non-moving party' s case. Celotex, 477 U .S. at 323 .
The burden then shifts to the non-movant to demonstrate the existence of a genuine issue
for trial. Matsushita Elec. Indus. Co. v. Zenith Radio Corp. , 475 U.S. 574, 586-87 (1986);
Williams v. Borough of West Chester, Pa., 891 F.2d 458 , 460-61 (3d Cir. 1989). A non-moving
party asserting that a fact is genuinely disputed must support such an assertion by: "(A) citing to
particular parts of materials in the record, including depositions, documents, electronically stored
information, affidavits or declarations, stipulations . .. , admissions, interrogatory answers, or
other materials; or (B) showing that the materials cited [by the opposing party] do not establish
the absence ... of a genuine dispute .... " Fed. R. Civ. P. 56(c)(l).
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). A dispute is "genuine" only if the evidence is such that a
reasonable jury could return a verdict for the non-moving party. Anderson, 477 U.S. at 247-49.
If the non-moving party fails to make a sufficient showing on an essential element of its case
with respect to which it has the burden of proof, the moving party is entitled to judgment as a
matter oflaw. See Celotex Corp., 477 U.S. at 322.
3
B. 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:
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 or 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.").
4
Schneider ex rel. Estate ofSchneider v. Fried, 320 F.3d 396, 404-05 (3d Cir. 2003) (cleaned
up).2
III.
DISCUSSION
A. SUMMARY JUDGMENT
1. The '920 Patent is Entitled to a Priority Date of March 4, 2002
Zimmer moves for summary judgment that the '920 patent is entitled to a priority date of
March 4, 2002. (D.I. 314 at 12). Stryker moved for summary judgment of invalidity because it
argues that the ' 920 claims are not entitled to a priority date earlier than 2006 or, alternatively,
August 2004. (D.I. 320 at 5, 7). The parties agree that entitlement to priority is a question of
law to be determined at summary judgment and that no material disputes of fact exist. (D.I. 417
at 6:11-13, 12:3-7; D.I. 314 at 13 (citing case law)). Stryker asserts that Zimmer is not entitled to
a March 4, 2002 priority date for two reasons: (1) the priority chain was broken when the
application for the ' 420 patent (of which the ' 920 patent is a reissue) did not reference the
original ' 425 patent application, and (2) the disclosure of the original application does not
provide the required § 112 written description support for the asserted claims. (D.I. 320 at 5, 7;
D.I. 359 at 8, 10). Zimmer argues that the ' 420 patent does not break the priority chain and that
Stryker has failed to identify a single claim limitation in the asserted claims that lacks support in
the original disclosure. (D.I. 314 at 13 ; D.I. 351 at 2, 5). I agree with Zimmer.
Where patent applicants seek a patent on an invention previously disclosed consistent
with 35 U.S .C. § 112(a), the applicant is entitled to claim the priority date of the earlier-filed
application. 35 U.S.C. § 120. Patent applicants seeking to claim the benefit of an earlier priority
2
The Court of Appeals wrote under an earlier version of Rule 702, but subsequent amendments to it were not
intended to make any substantive change.
5
date are required to include with the application a "specific reference to the earlier filed
application." Id. The "'specific reference' requirement mandates each [intermediate]
application in the chain of priority to refer to the prior applications." Medtronic Core Valve LLC
v. Edwards Lifesciences Corp., 741 F.3d 1359, 1363 (Fed. Cir. 2014) (internal citations omitted).
After a patent issues, a patentee may request a certificate of correction to correct "a mistake of
clerical or typographical nature, or of minor character." 35 U.S.C. § 255. Claims in
continuation-in-part applications may receive different priority dates. Waldemar Link v.
Osteonics Corp. , 32 F.3d 556, 558 (Fed. Cir. 1994).
First, the '420 patent application' s failure to reference the original '425 patent does not
break the priority chain of the '920 patent. Priority claims may be corrected by filing a reissue
application under 35 U.S.C. § 251. See Lucent Techs. Inc. v. Gateway, Inc., 470 F. Supp. 2d
1163, 1173 (S.D. Cal. 2007) (finding change in priority claim not broadening reissue); see also
Fontjin v. Okamoto, 518 F.2d 610, 621 (Cust. & Pat. App. 1975) ("[A] reissue application filed
for the sole purpose of perfecting a claim to priority does not broaden the scope of the claims of
the original patent and is not in contravention of the requirements of section 251 even though
filed more than two years after the patent grant.") (holding acknowledged in Medrad, Inc. v.
Tyco Healthcare Grp. LP, 466 F.3d 1047, 1051 (Fed. Cir. 2006)). As priority chains can be
corrected through reissue, it is illogical to determine that the application for the now-surrendered
patent breaks the priority chain. Such a determination would defeat the legally recognized use of
a reissue application to correct the priority chain in all cases.
Furthermore, longstanding PTO practice "has allowed patentees to use section 255
certificates of correction to correct section 120 priority chains since at least as early as 1976."
Word to Info, Inc. v. Google Inc., 140 F. Supp. 3d 986, 995 (N.D. Cal. 2015) (collecting cases).
6
"[I]nsofar as the PTO is concerned, a section 255 certificate of correction can be used to correct a
section 120 chain of priority defect even after patent issuance." Id. Thus, Stryker' s emphasis on
the distinction between patents and applications is misplaced. Stryker cites cases concerning
situations where the patentee did not attempt to correct the priority chain, either through reissue
or a certificate of correction. See Nat. Alts. Int 'l, Inc. v. Iancu, 904 F.3d 1375 (Fed. Cir. 2018);
Medtronic, 741 F.3d 1359. These cases say little about whether a certificate of correction to a
reissue patent is insufficient to correct the patent's priority chain.
Here, Zimmer obtained a certificate of correction for its priority claim in the reissued
'920 patent. As priority claims may be corrected through reissue, the failure of the '420 patent's
application to make the "specific references" required by§ 120 cannot alone be sufficient to
break the '920 patent's priority chain. Moreover, a certificate of correction is a legally
acceptable way to correct unintentional errors in a patent's priority chain, even after the patent
has been issued. Word to Info, 140 F. Supp. 3d at 993-94. Therefore, I determine that the '920
patent has an unbroken priority chain to the ' 425 patent application date, March 4, 2002.
Second, Zimmer has shown that the disclosure of the original application for the '425
patent provides the required§ 112 written description support for the asserted claims of the '920
patent. Claims in a continuation-in-part application will be "entitled to the benefit of an earlier
filed application only if the disclosure of the earlier application provides support for the claims
. .. as required by 35 U.S .C. § 112." PowerOasis, Inc. v. T-Mobile USA, Inc. , 522 F.3d 1299,
1306 (Fed. Cir. 2008) (quoting In re Chu, 66 F.3d 292,297 (Fed. Cir. 1995)); see also Augustine
Med., Inc. v. Gaymar Indus., Inc. , 181 F.3d 1291 , 1302-03 (Fed. Cir. 1999) ("Different claims of
[a CIP] application may therefore receive different effective filing dates .. . . Subject matter that
arises for the first time in [a] CIP application does not receive the benefit of the filing date of the
7
parent application."). The disclosure of the prior application must "convey with reasonable
clarity to those skilled in the art that, as of the filing date sought, [the inventor] was in possession
of the invention" as later claimed. Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir.
1991) (emphasis in original).
Stryker points to the inclusion of a new embodiment in the specification as evidence that
the original disclosure would not satisfy the written description requirement. (D.I. 320 at 5; D.I.
359 at 11). However, the test is not whether the claims may also find support in new matter, but
whether the original disclosure is sufficient to support the claims. PowerOasis, 522 F.3d at
1306. Here, I determine that the original disclosure of the ' 425 patent provides sufficient written
description for the reissue claims.
Both sides agree that the '600 publication would anticipate the ' 920 patent. (D.I. 314 at
17; D.I. 359 at 17). Anticipation requires "each and every limitation [to be] found either
expressly or inherently in a single prior art reference." King Pharms., Inc. v. Eon Labs., Inc., 616
F.3d 1267, 1274 (Fed. Cir. 2010). Stryker asserts that there is a distinction between anticipation
and written description, whereby a reference may anticipate without satisfying§ 112. (D.I. 320
at 7). However, Stryker has not demonstrated that support for the reissue claims is lacking here.
Stryker merely points to the existence of new matter in the specification and argues that the
claims are therefore not supported under PowerOasis. (D.I. 320 at 6). But PowerOasis is not
determinative here. There, the original application did not provide a written description of
"customer interface" as set forth in the asserted claims. PowerOasis, 522 F.3d at 1307-08.
There, in the continuation-in-part application, a new embodiment describing a vending machine
with a user interface located remotely from the vending machine influenced the construction of
the claim term "customer interface" to encompass more than the "user interface" located in the
8
vending machine in the original application. Id. at 1307-08. Here, however, Stryker points to
elements that could be added to the cart on top of the claimed elements as evidence that the
previous disclosure does not support the claims. These additional elements are claimed
separately from the asserted claims. (See, e.g., '920 patent, cl. 1). The original disclosure of the
'425 patent supports each claim element of the asserted reissue claims in the '920 patent and the
construction of those claim elements. Nor is the identification of a new utility enough for written
d~scription to fail where the claimed structure is the same. In re Kirchner, 305 F.2d 897, 903-04
(C.C.P.A. 1962). Therefore, the asserted claims of the ' 920 patent are entitled to priority date of
March 4, 2002 and are not invalid based on art after that date.
2. Stryker has Not Demonstrated an Absence of Genuine Dispute of Fact as
to Invalidity Under Section 112
Stryker moves for summary judgment of invalidity for lack of written description because
the Asserted Claims (1) "do not recite any mechanism to regulate or control vacuum in the
system required for the system to operate" and (2) use improper functional language. (D.I. 320
at 14-15). Zimmer argues that Stryker seeks to impose a rejected "essential element" test upon
patentees and that a person of ordinary skill in the art would understand the scope of the
functional language "independently adjustable" with reasonable certainty. (D.I. 351 at 9-10).
The written description requirement contained in 35 U.S.C. § 112, 1 1 requires that the
specification "clearly allow persons of ordinary skill in the art to recognize that the inventor
invented what is claimed." Ariad Pharm. , Inc. , v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir.
2010) (en bane) (cleaned up). "In other words, the test for sufficiency is whether the disclosure
of the application relied upon reasonably conveys to those skilled in the art that the inventor had
possession of the claimed subject matter as of the filing date. " Id. The written description
9
inquiry is a question of fact. See id. Although it is a question of fact, "[ c]ompliance with the
written description requirement .. . is amenable to summary judgment in cases where no
reasonable fact finder could return a verdict for the non-moving party." PowerOasis, 522 F.3d at
1307. "A party must prove invalidity for lack of written description by clear and convincing
evidence." Vasudevan Software, Inc. v. MicroStrategy, Inc. , 782 F.3d 671 , 682 (Fed. Cir. 2015).
A unique branch of§ 112 case law provides that where the specification clearly limits the
scope of the inventions in ways that the claims do not, the patent is invalid for lack of written
description. ICU Med. , Inc. v. Alaris Med. Sys., Inc., 558 F.3d 1368, 1378 (Fed. Cir. 2009)
("specification describes only medical valves with spikes" and the claims did not include a spike
limitation); Gentry Gallery, Inc. v. Berkline Corp., 134 F.3d 1473, 1479 (Fed. Cir. 1998)
("original disclosure clearly identifies the console as the only possible location of the control"
but claims did not limit the location of the controls). Stryker argues that the asserted claims of
the ' 920 patent are invalid for lack of written description under this line of cases.
Specifically, Stryker argues that "every single embodiment of the [fluid collection] cart in
the ['920 patent] includes a vacuum control system (in the form of a valve control system and
regulator) to regulate vacuum in the cart." (D.I. 320 at 14). However, the ' 920 specification
only recites a single embodiment of the fluid collection cart. ('920 patent, col. 4:56-6:36). 3 This
is unlike both ICU Medical and Gentry Gallery where the specification repeatedly made clear
that the spikes in ICU Medical and the console location in Gentry Gallery were critical to the
inventor' s contribution and therefore to the scope of the claims. Gentry Gallery, 134 F.3d at
1479; ICU Med. , 558 F.3d at 1378. Here, the independent claims recite "at least one of the
3
The specification does identify multiple uses for the fluid collection cart ('920 patent, col. 10:3-14), but does not
set out a second embodiment for the invention.
10
suction ports being configured to provide at least two different levels of suction" and "a level of
suction at one of the suction ports being independently adjustable of a level of suction at another
of the suction ports." ('920 patent, els. 15, 29). The specification provides an example of how to
achieve these claims- by using a valve control system and regulator. ('920 patent col. 5:44-49).
"It is well established that ' it is not necessary to claim in a patent every device required to enable
the invention to be used. "' Asyst Techs., Inc. v. Empak, Inc. , 268 F.3d 1364, 1371 (Fed. Cir.
2001) (quoting Hughes Aircraft Co. v. United States, 640 F.2d 1193, 1197 (Ct. Cl. 1980)).
Unlike the spikeless claims in ICU Medical and the console location in Gentry Gallery, here, the
exclusion of the valve control system and regulator from the independent claims neither changes
how the system functions nor broadens the scope of the invention. Therefore, I determine that
Stryker has not demonstrated that a reasonable jury could not determine that claims 15 and 29 of
the ' 920 patent have sufficient§ 112 support.
Stryker raises a second§ 112 issue: whether claim 29 of the ' 920 patent is invalid for
indefiniteness as a result of improper functional claiming. (D.I. 320 at 15). Specifically, Stryker
contends that the level of suction being "independently adjustable" in claim 29 is improper
functional claiming under Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1255-56
(Fed. Cir. 2008).
Zimmer asserts that claim 29 is not indefinite because '" independently
adjustable' is not a relative term of degree, but instead an absolute statement about the vacuum,
which one of ordinary skill would understand with reasonable certainty." (D.I. 351 at 11).
The Federal Circuit has stated that when determining whether functional language is
indefinite " [w]hat is needed is a context-specific inquiry into whether particular functional
language actually provides the required reasonable certainty." BASF Corp. v. Johnson Matthey
Inc., 875 G.3d 1360, 1366 (Fed. Cir. 2017). " [C]ase law is clear that an applicant is not required
11
to describe in the specification every conceivable and possible future embodiment of his
invention." Rexnord Corp. v. Laitram Corp., 274 F.3d 1336, 1344 (Fed. Cir. 2001). "[A] vice of
functional claiming occurs ' when the inventor is painstaking when he recites what has already
been seen, and then uses conveniently functional language at the exact point of novelty. "'
Halliburton , 514 F.3d at 1255 (quoting Gen. Elec. Co. v. Wabash Appliance Corp., 304 U.S.
364,371 (1938)).
Here, the claim language " independently adjustable" would inform a person of ordinary
skill in the art of the claim scope with reasonable certainty as it is not a relative term of degree,
but rather a binary proposition. The suction level at one suction port must be able to be adjusted
independent of another. This is not the unclear functional language of Halliburton. See 514
F.3d at 1253 (specification did not note the "degree of fragility of its invention"); see also
Medicines Co. v. Mylan, Inc., 853 F.3d 1296, 1307 (Fed. Cir. 2017) (claim recited "efficient"
mixing but specification did not define "efficient"). Therefore, I determine that Stryker had not
met its burden on summary judgment to show that claim 29 is indefinite because of improper
functional claiming.
3. The '920 Patent is not Invalid for Obviousness-Type Double Patenting
Zimmer has moved for summary judgment that the asserted claims are not invalid over
the claims ofrelated U.S. Patent No. 7,090,663 ("the '663 patent") as a matter oflaw. (D.I. 314
at 18). Stryker cross-moves that the asserted claims are invalid for obviousness-type double
patenting. (D.I. 359 at 17). As the parties were briefing summary judgment motions, Zimmer
filed a terminal disclaimer of the ' 920 patent term. (D.I. 387 at 5; D.I. 388-1, Ex. 27). Stryker
requested and received permission to file a supplemental motion for summary judgment of
limitation of damages to post-disclaimer infringement. (D.1. 396; D.I. 410).
12
A patent may be invalid for obviousness-type double patenting where two patents are
commonly owned and the later-expiring patent would have been obvious in light of the earlierexpiring patent. See AbbVie Inc. v. Mathilda, 764 F.3d 1366, 1373-74 (Fed. Cir. 2014). Zimmer
asserted in its opening brief, without conceding obviousness, that the ' 920 patent and the ' 663
patent have the same expiration date because the patents both claim priority to the same date and
have received no patent term extensions or adjustments. (D.I. 314 at 18-19, 18 n.5). Therefore,
Zimmer asserts the ' 920 patent is not invalid for obviousness-type double patenting. (Id.) .
Stryker argues that the ' 920 patent is obvious in light of the related ' 663 patent, and that the ' 663
patent expires roughly two years earlier than the ' 920 patent because the ' 920 patent was
reissued for the same patent term as the now-surrendered '420 patent. (Id.).
The ' 920 patent is not invalid for obviousness-type double patenting. Stryker' s
arguments regarding § 251 and reissue patent terms reflect a hypertechnical reading of the statute
and ignore the general statutory limitation that a patent term may only be granted for a term of
twenty years from the application' s filing or priority date.4 35 U.S.C. § 154(a)(2). After the
' 920 patent issued, Zimmer obtained a certificate of correction correcting the priority date. (D.I.
315-1 at 336). Accepting Stryker' s argument would result in the ' 920 patent receiving a twentytwo year patent term, instead of the mandated twenty. Moreover, Stryker' s application of the
law would eliminate the ability of parties to correct a priority claim through reissue proceedings. 5
As the ' 663 patent and the ' 920 patent claim the same priority date and have no patent term
4
While a patent term may be extended for a variety of reasons, the ' 920 patent did not receive any extensions. (D.I.
314at19 ; D.I. 315-1 at 2 15 , 370).
5
As discussed previously, courts have endorsed correction of priority claims through reissue proceedings. Fontjin,
518 F.2d at 62 1 (acknowledged by Medrad, 466 F.3 d at 1051); see also Lucent, 470 F. Supp. 2d at 1173.
13
extension, I determine that the patent term for both patents expires on the same day. Therefore,
obviousness-type double patenting does not apply as a matter of law. 6
As the ' 920 patent was not invalid for obviousness-type double patenting before Zimmer
filed a disclaimer, the disclaimer does not prevent Zimmer from seeking damages before
December 12, 2018. I am unconvinced that Rembrandt Wireless Techs., LP v. Samsung Elecs.
Co., 853 F.3d 1370 (Fed. Cir. 2017), clearly decides this issue. Rembrandt addressed the issue
of parties using disclaimer to circumvent the marking requirement under 35 U.S .C. § 287.
Specifically, the Federal Circuit held that disclaimer cannot retroactively circumvent a third
party's rights and the patentee's past obligation to mark. It did not clearly determine that
disclaimer could never be given retroactive effect. There is a distinction between an attempt to
evade a past obligation through retroactive disclaimer versus using a terminal disclaimer to avoid
invalidity by disclaimingfuture patent rights. The policy behind the doctrine of obviousnesstype double patenting is to prevent parties from extending the term of their patent beyond the
statutory term. Yet, the Federal Circuit has previously endorsed the use of terminal disclaimers
to override invalidity during litigation. See Boehringer Ingelheim Intern. GmbH v. Barr Labs.,
Inc., 592 F.3d 1340, 1347 (Fed. Cir. 2010) ("[A] patentee may file a disclaimer after issuance of
the challenged patent or during litigation, even after a finding that the challenged patent is
invalid for obviousness-type double patenting."); Perricone v. Medicis Pharm. Corp., 432 F.3d
1368, 1375 (Fed. Cir. 2005) ("[a] terminal disclaimer can indeed supplant a finding of invalidity
for double patenting"). Boehringer suggests that terminal disclaimer only creates issue of
retroactivity when it is pursued after the earlier patent expires. 592 F.3d at 1347. In other words,
6
As such, it is not necessary to determine whether the ' 920 patent would be obvious in light of the ' 663 patent. I do
note, however, that Stryker devotes only a single sentence to the issue of obviousness, which cannot satisfy the clear
and convincing burden of proof for invalidity defenses.
14
harm to others from obviousness-type double patenting only occurs after the earlier patent
expires. I determine that Zirnmer' s disclaimer, therefore, does not limit Zirnmer's past damages.
4. The '920 Patent is not Invalid for Reissue Recapture
Zimmer moves for summary judgment that the ' 920 patent claims do not violate the rule
against recapture. Stryker cross-moves that the claims are invalid for improper recapture.
Reissue proceedings "cannot be used to obtain subject matter that could not have been included
in the original patent." Medtronic, Inc. v. Guidant Corp., 465 F.3d 1360, 1372 (Fed. Cir. 2006).
"Under the ' recapture' rule, the deliberate surrender of a claim to certain subject matter during
the original prosecution of the application for a patent ' made in an effort to overcome a prior art
rejection' is not such ' error' as will allow the patentee to recapture that subject matter in a
reissue." Id. at 13 72-73.
The parties agree the recapture rule requires a three-step analysis. The Court must first
determine "whether, and in what respect, the reissue claims are broader" than the original patent
claims. Id. at 1373. Second, the court must determine whether the "broader aspects of the
reissue claims relate to subject matter surrendered in the original prosecution." Id. The
surrender at this second step must be deliberate. Id. at 13 72-73 . Absent "evidence that an
amendment or cancellation was ' an admission that the scope of that claim was not in fact
patentable,"' surrender is not deliberate. Medtronic Inc. v. Guidant Corp. , 378 F. Supp. 2d 503 ,
518 (D. Del. 2005), aff'd 465 F.3d 1360 (Fed Cir. 2006) (internal citations omitted). Third, if
surrender is deliberate, the court then determines "whether the reissue claims were materially
narrowed in other respects" to avoid the recapture rule. Medtronic, 465 F.3d at 1373.
Stryker has asserted a defense that the asserted ' 920 claims violate the recapture rule in
light of an amendment made during the prosecution of the ' 663 patent. The ' 663 patent is a
15
divisional of the ' 425 patent and also claims priority to the ' 425 patent. (D.I. 315-1 at 370).
Stryker' s asserted defense is based upon dependent claim 6 of the ' 663 patent, which depends
from claim 5, which depends from claim 1. (D.I. 359 at 20). During prosecution, the Examiner
rejected claims 1, 2, 4, and 5 as obvious. (D.I. 362-1 at 321-27). The Examiner did not reject
claims 6-8, instead stating, "Claims 6-8 are objected to as being dependent on a rejected base
claim, but would be allowable if rewritten in independent form including all of the limitations of
the base claim and any intervening claims." (Id. at 327). Zimmer did not rewrite claim 6 as an
independent claim but amended claim 1 to overcome the obviousness objection. (Id. at 332-34).
Stryker cites this amendment as the basis for its recapture defense.
Zimmer argues that Stryker' s recapture defense fails as a matter of law because Stryker
cannot demonstrate the deliberate surrender of subject matter in claim 6 to overcome a prior art
rejection. Specifically, Zimmer argues that claim 6 was never rejected under the prior art, and
the amendment to claim 1 cannot be the "deliberate surrender" of claim 6 subject matter under
the recapture rule. I agree with Zimmer. The first step of the recapture analysis asks whether
and in what aspect the reissued claims of the '920 patent are broader than those of the '663
patent. Stryker asserts the reissued claims are broader than the ' 663 patent. Zimmer states that I
need not address this point because step two of the analysis is determinative. I agree.
The second step of the recapture analysis asks whether there was any deliberate surrender
of a claim to certain subject matter to overcome a prior art rejection. I determine there was not.
The Examiner specifically provided that claim 6 was allowable if rewritten in independent form.
The fact that Zimmer amended claim 1 to overcome a separate prior art rejection does not equate
to a deliberate surrender of the subject matter deemed allowable under claim 6. There must be
evidence that an amendment or cancellation was an admission that the scope of that claim was
16
not in fact patentable for surrender to be deliberate. Medtronic, 378 F. Supp. 2d at 518. Here,
the evidence does not indicate that the amendment of independent claim 1 was an admission that
the scope of claim 6 was not in fact patentable. Because I have determined that there was no
deliberate surrender under step two of the recapture analysis, I need not continue to step three.
The asserted claims of the ' 920 patent are not invalid for reissue recapture.
5. Stryker Has Not Demonstrated an Absence of Genuine Dispute of Fact as
to Whether the Terry Reference Invalidates the '920 Patent
Stryker asserts that the ' 920 patent is invalid as anticipated by or obvious in light of the
Terry patent as a matter oflaw, even with a 2002 priority date. 7 (D.I. 320 at 9). Zimmer asserts
that factual issues preclude summary judgment. (D.I. 351 at 6). A patent claim is anticipated "if
each and every limitation is found either expressly or inherently in a single prior art reference."
King Pharms., Inc. v. Eon Labs., Inc., 616 F.3d 1267, 1274 (Fed. Cir. 2010). Patents are
presumed valid and invalidity must be proven by clear and convincing evidence. Microsoft
Corp. v. i4i Ltd. P 'ship, 564 U.S. 91 (2011).
First, Stryker has not shown an absence of disputes of fact as to whether the Terry
Reference anticipates claims 15, 17, 18, 20, 21 , 27, 29, 30, 32, 33 , 35 , and 36. There is a dispute
over two claim elements: (1) "at least one of the suction ports being configured to provide at
least two different levels of suction" and (2) "a level of suction at one of the suction ports being
independently adjustable of a level of suction at another of the suction ports." (Ex. 504 at 30).
Zimmer asserts that the claims of the '920 patent "require active suction control and independent
adjustment when a vacuum is applied and that Terry discloses no such thing." (D.I. 351 at 7).
7
Stryker asserts that Claims 15, 17, 18, 20, 21 , 27, 29, 30, 32, 33, 35 and 36 are anticipated by the Terry Patent.
(D.I. 320 at 9). Stryker asserts that the Terry Patent anticipates Claims 19, 28 and 34 or otherwise renders them
obvious as a matter of law. (D.l. 320 at 12). Finally, Stryker asserts that the Terry Patent renders Claims 24 and 39
obvious. (D.I. 320 at 13).
17
Stryker asserts that the Terry reference "satisfies these limitations via ' control levers 44 ' that
separately control the vacuum level at each of two suction ports on the cart." (D.I. 320 at 10.)
"Disputed material issues of fact concerning how one of ordinary skill in the art would
understand disclosure of a particular technology mandates denial of summary judgment of
anticipation." Robocast, Inc. v. Apple, Inc. , 39 F. Supp. 3d 552, 564 (D. Del. 2014) (citing
Osram Sylvania v. Am. Induction Techs., 701 F.3d 698, 706 (Fed. Cir. 20 12). This is such a
case. Moreover, there are factual disputes regarding whether the Terry reference discloses every
limitation of independent claims 15 and 29. (D.I. 351 at 70). Stryker's motion for summary
judgment of invalidity of claims 15, 17, 18, 20, 21 , 27, 29, 30, 32, 33 , 35, and 36 is therefore
denied.
Second, Stryker has not demonstrated an absence of genuine factual disputes as to
whether the Terry Reference anticipates claims 19, 28 and 34 or otherwise renders them obvious
as a matter of law. Nor has Stryker shown an absence of dispute of fact as to whether the Terry
Reference renders claims 24 and 39 obvious. These claims are dependent claims and depend
from claims 15 and 29. "As a dependent claim contains at least one more limitation than the
independent claim upon which it depends, it cannot be invalid under § 102 .. . if the independent
claim upon which it depends is not anticipated." CA, Inc. v. Simple.com, Inc. , 780 F. Supp. 2d
196, 260 (E.D.N.Y. 2009); see also Duhn Oil Tool, Inc. v. Cooper Cameron Corp., 2012 WL
604138 (E.D. Cal. Feb. 23 , 2012). As there are genuine disputes of fact as to whether claims 15
and 29 are anticipated, there are also genuine disputes of fact as to the dependent claims.
Similarly, if an independent claim is nonobvious, then the dependent claim is also
nonobvious. In re Fine, 837 F.2d 1071 , 1076 (Fed. Cir. 1988) ("A claim that depends from a
non-obvious independent claim is non-obvious because it contains all the limitations of the
18
independent claim, plus a further limitation."). Thus, I do not need to consider "arguments that
certain dependent claim limitations would have been obvious where the base claim has not been
proven invalid." SynQor, Inc. v. Artesyn Techs. , Inc., 709 F.3d 1365, 1375 (Fed. Cir. 2013). As
there are genuine disputes of fact as to whether 15 and 29 are invalid for obviousness, those
disputes also exist for the dependent claims. Thus, Stryker has not met its burden.
6. The '920 Patent is not Invalid for Violating Original Patent Requirement
35 U.S.C. § 251 provides, "Whenever any patent is, through error, deemed wholly or
partly inoperative or invalid . .. by reason of a patentee claiming more or less than he had a right
to claim," the PTO may "reissue the patent for the invention disclosed in the original patent."
The Federal Circuit has stated that "the essential inquiry under the 'original patent' clause of
§ 251 ... is whether one skilled in the art, reading the specification, would identify the subject
matter of the new claims as invented and disclosed by the patentees." Hester Indus. , Inc. v.
Stein, Inc., 142 F.3d 1472, 1484 (Fed. Cir. 1998) (quoting In re Amos, 953 F.2d 613 , 618 (Fed.
Cir. 1991)). The Federal Circuit has explained that the inquiry "is analogous to the written
description requirement under § 112, ,r 1," Revolution Eyewear, Inc. v. Aspex Eyewear, Inc., 563
F.3d 1358, 1367 (Fed. Cir. 2009), but that "the specification must clearly and unequivocally
disclose the newly claimed invention as a separate invention." Antares Pharma v. Medac
Pharma, 771 F.3d 1354, 1362 (Fed. Cir. 2014). "Whether the claims of a reissue patent violate
35 U.S.C. § 251 , and thus are invalid, is a question oflaw .... " N. Am. Container v. Plastipak
Packaging, 415 F.3d 1335, 1349 (Fed. Cir. 2005).
Stryker moves for summary judgment that the asserted reissue claims violate the original
patent requirement. (D.I. 320 at 16-17). Specifically, Stryker, relying on Antares, asserts that
the '920 patent "does not explicitly describe a collection cart and disposal unit without the
19
features of the '420 patent." (Id. at 17). Zimmer argues that Stryker overextends Antares
because the court there relied on the failure of the specification to disclose "the particular
combinations of safety features claimed on reissue." (D.I. 351 at 14 (quoting Antares, 771 F.3d
at 1363)).
I agree with Zimmer. The ' 920 patent specification expressly discloses every limitation
of the asserted claims. It discloses a collection cart and disposal unit without the features that
Stryker identifies as new matter in the ' 420 patent. ('920 patent, col. 4:64-6:40, 6:55-7:21 , 8:820, 9:62-10:2). Therefore, the original '420 patent did more than merely suggest or indicate the
invention of a collection cart and disposal unit system in the specification. This is not a case like
Antares where the focus of the claims shifted from the original patent (jet injectors) to the reissue
patents (safety features) . 771 F.3d at 1362-63 . Moreover, I understand the ' 420 patent to
describe "independently adjustable" suction at the suction ports or suction ports arranged to have
at least two levels of suction within the specification, though it does not do so explicitly. (See
'420 patent, col. 6:4-28). The '420 patent describes a collection cart and disposal unit. The
reissue claims of the ' 920 patent are therefore directed to the invention disclosed in the original
patent and are not invalid under the original patent requirement. Stryker' s motion for summary
judgment is therefore denied.
7. Intervening Rights
Zimmer moves for summary judgment that Stryker is precluded from asserting an
intervening rights defense. (D.I. 314 at 22). Stryker cross-moves for summary judgment that it
is entitled to intervening rights as a matter of law and independently moves for summary
judgment that Zimmer is only entitled to damages on manifolds used with accused systems sold
after the ' 920 patent issued. (D.I. 320 at 21 ; D.I. 359 at 23).
20
The doctrine of intervening rights "provides an accused infringer with the absolute right
to use or sell a product that was made, used, or purchased before the grant of the reissue patent as
long as this activity does not infringe a claim of the reissue patent that was in the original
patent." BIC Leisure Prods. , Inc. v. Windsurfing Int '!, Inc. , 1 F.3d 1214, 1220-21 (Fed. Cir.
1993); see 35 U.S.C. § 252; Marine Polymer Techs. , Inc. v. HemCon, Inc. , 672 F.3d 1350, 136162 (Fed. Cir. 2012). "[I]ntervening rights is an affirmative defense, and as such, the burden of
proof rests on the party raising the defense. " Infest Corp. v. Reid-Ashman Mfg. , Inc., 66 F. Supp.
2d 576, 582 (D. Del. 1999).
Stryker argues that Zimmer is not entitled to damages on manifolds purchased for use
with systems purchased before the '920 patent reissued or before this lawsuit was filed, because
(1) the Asserted Claims were not present in the original patent, and (2) Zimmer did not mark its
products or provide notice of the '920 patent under 35 U.S.C. § 287 until it filed suit in August
2016. (D.I. 320 at 21-22). Zimmer argues that Stryker should be foreclosed from seeking a
reduction in damages due to intervening rights because Stryker has failed to produce certain
financial sales information. (D.I. 314 at 22). Zimmer argues that to prove its defense of
intervening rights, "Stryker must prove both that a cart was sold to a customer during the
relevant time and that a later sold manifold was sold for use with that particular cart." (D.I. 351
at 19). Zimmer asserts that when "damages cannot be ascertained with precision because the
evidence available from the infringer is inadequate, doubt is resolved against the infringer."
Revolution Eyewear, Inc. v. Aspex Eyewear, Inc., 2008 WL 6873811, at *5 (C.D. Cal. Jan 3,
2008). The only sales data produced by Stryker was cumulative sales data. Zimmer alleges that
this is insufficient to establish an intervening rights defense. (D.I. 314 at 23).
21
Stryker responds, "The only question to ask under [the intervening rights] test is whether
claims of the original patent which are repeated in the reissue patent are infringed." Austin
Powder Co. v. Atlas Powder Co. , 593 F. Supp. 208,215 (D. Del. 1984) (quoting Seattle Box Co.
v. Industrial Crating & Packing, Inc., 731 F.2d 818, 829-30 (Fed. Cir. 1984)). Stryker also
contends that the customer specific data does not describe which manifolds customers use with
fluid carts and that, if Zimmer believed that data was necessary, it should have moved to compel
production during discovery. (D.I. 359 at 28-29).
Genuine disputes of material fact preclude summary judgment on Stryker' s intervening
rights defense. The parties dispute whether any of the manifolds on which Zimmer seeks
damages were sold for use with an accused cart purchased before the '920 patent reissued. (D.I.
314 at 23; D.I. 359 at 26). As there may be no manifolds for which an intervening rights defense
could apply, summary judgment that Stryker is entitled an intervening rights defense as a matter
of law is inappropriate.
However, it is improper to foreclose Stryker from offering its intervening rights defense
when Zimmer did not compel production of evidence it now states is necessary. The cases
Zimmer cites in support of its arguments do not support the imposition of such a harsh penalty
upon Stryker. Rather, the cases suggest that an adverse inference may be appropriate where
evidence has been destroyed or not maintained. See Sensonics, Inc. v. Aerosonic Corp., 81 F.3d
1566, 1572 (Fed. Cir. 1996). Nor at this point can I conclude that there is no evidence to support
the damages conclusion. See Revolution, 2008 WL 6873811, at *4-8. Here, Stryker provides
expert testimony based on underlying data to establish the number of manifolds it believes will
be subject to intervening rights. (D.I. 362-1 , Ex. 1019 at ,r,r 29, 32-35, 39-40). A reasonable jury
22
could determine that those manifolds are not subject to damages. Therefore, summary judgment
is inappropriate, and Stryker is not foreclosed from presenting an intervening rights defense.
8. Zimmer may Pursue Lost Profits
Stryker moves for summary judgment that Zimmer is not entitled to lost profits on the
' 920 patent because Zimmer has failed to establish the absence of noninfringing alternatives.
(D.I. 320 at 17). Zimmer opposes the motion for two reasons: (1) that in a two-supplier market,
there is a presumption of causation for lost profits, and (2) that a dispute as to the number of
suppliers in the relevant market raises a factual issue. (D.I. 351 at 14-15).
I determine that there are material disputes of fact that preclude summary judgment.
Specifically, the parties dispute whether there are any noninfringing alternatives. 8 I determine
that a reasonable jury could determine that there is an absence of noninfringing alternatives given
the circumstances of the market recall that Dr. Mody refers to in her expert report. (D.I. 352-1 at
34). Therefore, I deny Stryker' s motion for summary judgment of no lost profits.
9. Zimmer may Pursue Damages for Manifold Sales
Stryker moves for summary judgment that Zimmer is not entitled to damages for any
manifold sales because the manifolds are unpatented products and not required for infringement.
(D.I. 320 at 19-20). Zimmer argues that its technical expert, Mr. Meyst, has testified that the
manifolds are part of the claimed infringing system because the manifold ports are the suction
ports required by the claims. (D.I. 351 at 16-17). Zimmer also asserts that even if a manifold is
not necessary for infringement, it is still entitled to damages for the manifold sales under a
functional and economic "single-unit" theory. (Id. at 17).
8
Stryker has moved to exclude certain testimony of Zimmer's experts regarding non infring ing alternatives.
23
There is a genuine dispute of material fact which precludes summary judgment as to
damages on manifold sales. Stryker contends that its accused product, the Neptune 2 fluid cart,
does not infringe. Zimmer' s expert offers two alternate theories on infringement: that the
manifold operates as the claimed suction port, or the face plate on the accused product is the
claimed suction port. (D.I. 351 at 16). A reasonable jury could find from the expert testimony
that the manifold, when used in the system, is the suction port claimed, and therefore is part of
the infringing system as a whole. Thus, there is a dispute of material fact as to whether Stryker's
manifolds are part of the infringing system and subject to damages.
If the manifolds are not part of the infringing system, Zimmer is not entitled to lost
profits damages for the manifolds under a "convoyed sales" analysis as a matter of law. In RiteHite Corp. v. Kelley Co. Inc., 56 F.3d 1538 (Fed. Cir. 1988), the Federal Circuit "explained that
the entire market value rule was a principle of patent damages that defined a patentee's ability to
recover lost profits on unpatented components typically sold with a patented item." Juicy Whip,
Inc. v. Orange Bang, Inc., 382 F.3d 1367, 1371 (Fed. Cir. 2004). The entire market value rule
"permits recovery of damages based on the value of a patentee's entire apparatus containing
several features when the patent related feature is the basis for customer demand." Rite-Hite, 56
F.3d at 1549. Thus, " [a] patentee may recover lost profits on . .. a convoyed sale[] if both the
patented and unpatented products 'together were considered to be components of a single
assembly or parts of a complete machine, or they together constituted a functional unit"' and the
patent-related feature drives demand for the functional unit as a whole. Am. Seating Co. v. USSC
Group, Inc., 514 F.3d 1262, 1268 (Fed. Cir. 2008) (quoting Rite-Hite, 56 F.3d at 1550).
Here, there is a functional relationship between the manifolds and the fluid carts- the
fluid carts cannot operate to achieve their function without a manifold. (D.I. 351 at 17).
24
Therefore, the manifolds and the fluid carts are "analogous to parts of a single assembly or a
complete machine," Juicy Whip, 382 F.3d at 1372, that "function together to achieve one result,"
Rite-Hite, 56 F.3d at 1551. However, there is no material dispute of fact that the patented
features-independently adjustable suction and two canisters-do not drive demand for the
functional unit as a whole. (D.I. 333 , Ex. 1000 at 241 -45, Ex. 1003 at 248-252, 271-275; D.I.
329, Ex. E, ,r 54). Therefore, as Zimmer cannot show that its patented features drive customer
demand, it cannot show entitlement to convoyed sales.
Stryker also moves for summary judgment that damages on manifold sales should be
limited to those sold for use with Neptune fluid carts sold after this lawsuit was filed because
Zimmer did not satisfy the marking or notice requirement of 35 U.S.C. § 287. (D.I. 320 at 22).
Zimmer opposes the motion, arguing that Stryker has failed to tie any post-notice manifold sales
to Neptune carts sold pre-suit. (D.I. 351 at 19). As discussed above, there is a genuine dispute
of material fact as to whether any of the manifolds on which Zimmer seeks damages were sold
for use with an accused cart purchased before Stryker received notice of the ' 920 patent.
10. Willful Infringement
Stryker moves for summary judgment of no willful infringement of the ' 920 patent. (D.I.
320 at 23). "[A]n infringer' s subjective bad faith alone may support an award of enhanced
damages" under Halo Elecs. , Inc. v. Pulse Elecs., Inc., 136 S. Ct. 1923 (2016). WBIP, LLC v.
Kohler Co., 829 F.3d 1317, 1340-41 (Fed. Cir. 2016). A patentee need only prove "subjective
willfulness alone- i.e., proof that the defendant acted despite a risk of infringement that was
'either known or so obvious that it should have been known to the accused infringer."'
WesternGeco LLC. v. ION Geophysical Corp., 837 F.3d 1358, 1362 (Fed. Cir. 2016) (quoting
Halo, 136 S.Ct. at 1930).
25
Stryker argues that "Zimmer has not identified any 'egregious' behavior by Stryker that
would rise to the level of willful infringement." (D.I. 320 at 23). Implicit in Stryker's briefing is
the assertion that Stryker's continued sale of the accused products after the filing of this suit is
not egregious. (See id. (stating Zimmer only identified continued sale of accused products)).
Zimmer argues that a jury could infer that Stryker has engaged in egregious behavior beyond
infringement from Stryker's continued sale, marketing, and refusal to design around the '920
patent to avoid infringement after this suit was filed. (D.I. 351 at 20-21).
To determine whether willful infringement has occurred, the correct inquiry is the
"subjective willfulness" of the infringer, not whether the infringement itself was "egregious."
Valinge Innovation AB v. Halsted New England Corp. , 2018 WL 2411218, at *7 (D. Del. May
29, 2018). Taking the evidence in the light most favorable to Zimmer, as I am required to do, I
determine that a reasonable jury could find Stryker' s post-filing conduct to be willful. Zimmer
has alleged that Stryker continues to infringe, has failed to undertake efforts to design around the
'920 patent, and has asserted defenses that it knows to be unreasonable.9, 10 (D.I. 351 at 21). A
reasonable jury could, therefore, find that Stryker "acted despite a risk of infringement that was
'either known or so obvious that it should have been known to [Stryker]. '" WesternGeco LLC,
837 F.3d at 1362 (quoting Halo , 136 S.Ct. at 1930). Accordingly, the Court will deny Stryker' s
motion for summary judgment of no willful infringement.
9
Zimmer alleges that Stryker has "opted to assert supposed non infringing alternatives that Stryker itself refused to
market during the FDA recall" of its accused infringing product. (D.I. 351 at 21).
10
Zimmer needs to get my express permission before it offers any evidence to the jury that suggests Stryker's trial
counsel are asserting unreasonable defenses.
26
11. Stryker has not Proven that Zimmer Infringes the '428 Patent
Stryker has filed a motion for summary judgment that Zimmer infringes claims 14 and 23
of the ' 428 patent as well as the associated dependent claims. (D.I. 320 at 2). Zimmer filed a
motion for summary judgment that the claim term "receiver" is a means-plus-function element
and that Zimmer does not infringe under that construction. (D.I. 314 at 25).
a. Claim Construction of "Receiver"
The parties agree that the term "receiver" needs construction. (D.I. 314 at 25 ; D.I. 320 at
27). Stryker contends that the ordinary meaning ofreceiver is "receptacle." (D.I. 320 at 27).
Zimmer asserts that "receiver" is a means-plus-function element under 35 U.S.C. § 112 ,r 6 and
should be defined by its function: receiving the manifold housing. (D.1. 314 at 26). The Court
will construe the term "receiver" in the ' 428 patent to mean "receptacle" for the following
reasons.
When determining whether a term is subject to 35 U.S.C. § 112 ,r 6, " [t]he standard is
whether the words of the claim are understood by persons of ordinary skill in the art to have a
sufficiently definite meaning as the name for the structure." Williamson v. Citrix Online , 792
F.3d 1339, 1349 (Fed. Cir. 2015). Where the claim does not use the word "means," there is a
presumption that§ 112, ,r 6 does not apply. Id. at 1348-49. This presumption may be overcome
"if the challenger demonstrates that the claim term fails to recite sufficiently definite structure or
else recites function without reciting sufficient structure for performing that function. " Id.
(cleaned up).
The term "receiver" does not meet this test. The claims do not use the word "means" and
therefore, absent evidence otherwise, the term is not a means-plus-function element. Zimmer has
not shown that the term "receiver" fails to recite sufficient structure for performing that function.
27
I determine that the plain and ordinary meaning of "receiver" is clear from the intrinsic record.
The claim language itself provides sufficient structure to inform a person of ordinary skill in the
art of the structure of the receiver. Claims 1, 14, and 23 explain that the receiver is "shaped to
have: a bore dimensioned to receive" the manifold housing, "the bore having an open distal end
into which said manifold is inserted .. .. " ('428 patent, col. 21:46-50). The receiver is "formed
with complementary alignment features that engage when the manifold is inserted .... " (Id.
21 :56-58). The specification clearly discusses components of the receiver in various
embodiments and includes four columns describing the preferred embodiment of the receiver and
its components. (Id. 5: 14-9: 15). Thus, I determine that the appropriate construction of
"receiver" is "receptacle."
b. There are Material Disputes of Fact Precluding Summary
Judgment
There are genuine disputes of material fact that preclude summary judgment on
infringement of the '428 patent. First, as to claims 14 and 23 of the ' 428 patent, there are
genuine disputes of fact as to whether (1) the "fluid communications path from the receiver bore
into first canister" limitation is met, (2) the "proximal end in fluid communication with [the] first
canister" limitation is met, and (3) the canister caps or lids can be a receiver. The parties'
experts disagree as to whether the opening of the receiver bore in the canister is the fluid
communications path. (D.I. 351 at 26-27). Moreover, the experts have testified as to the
manifolds being in fluid communication with the canister, but Zimmer' s expert contends that the
proximal end of the receiver bore is not in fluid communication with the canister. (Id. at 28).
Additionally, Zimmer points to testimony from Stryker' s expert, Mr. Sheehan, that a receiver
cannot be a cap. (D.I. 334 at 415). Zimmer argues that the alleged infringing receiver operates
28
as a cap, and therefore cannot meet the claim terms of the '428 patent. (D.I. 351 at 29).
Therefore, there is a genuine dispute of material fact as to whether Zimmer infringes claims 14
and 23 the ' 428 patent.
Second, as to claim 14 of the ' 428 patent, there is an additional dispute as to whether the
manifolds satisfy the outlet at the proximal end of the housing requirement of the claims.
Specifically, Dr. Layton has explained that Zimmer's systems do not have a manifold as required
by claim 14. (D.I. 332, Ex. 515 ,i 65). Stryker contends that the opening does not need to be
"part of' the manifold housing. (D.I. 320 at 33). Therefore, there is a genuine dispute of
material fact as to whether this claim limitation is satisfied and summary judgment is not
appropriate.
12. Stryker has Not Shown that Zimmer Cannot Prove Invalidity based on
Prior Art
Stryker seeks summary judgment that the asserted claims of the ' 428 patent are not
obvious because Zimmer cannot establish that the prior art includes multiple elements of the
'428 claims. (D.I. 320 at 34). Zimmer argues that factual issues preclude summary judgment.
(D.I. 351 at 33). Obviousness is a question of law based on underlying factual issues, including
the scope and content of the prior art, the differences between the claims and the prior art, the
level of ordinary skill in the art, and objective indicia of nonobviousness. Graham v. John Deere
Co., 383 U.S . 1, 17-18 (1966).
I agree with Zimmer that there are material disputes of fact that preclude summary
judgment. Stryker identifies two elements of the ' 428 patent claims that it asserts Zimmer
cannot show were present in the prior art: (1) the independent claims require a manifold to sit at
an angle within a receiver, and (2) the independent claims require that when the manifold is
29
rotated about the receiver bore axis from a first position to a second position, the "outlet opening
[when the manifold is in the second position] is located below the position of the outlet opening
when [the manifold] is in the first rotational position." ('428 patent, cl. 1, 14, 23). However,
Zimmer has identified pieces of prior art, which its experts contend teach these elements of the
'428 patent claims. (D.I. 351 at 34-35).
First, Zimmer's expert Dr. Layton identified the Adahan reference, which he asserts
teaches that fluid should enter a waste container at an angle rather than vertically. (D.I. 332, Ex.
525 at 5:5-33). Moreover, a disagreement between the experts about what the Adahan reference
discloses is a factual dispute about the content of the prior art. Graham, 383 U.S. at 17-18.
Second, Zimmer' s expert identifies the use of certain lids, the CL 100 and CL200, with the prior
art transposal system as teaching the outlet opening moving from one position to a position
located below. 11 (Ex. 514 ,r,r 169-175). Therefore, because Zimmer has identified genuine
disputes of material fact, summary judgment of invalidity on the ' 428 patent is inappropriate.
B. DAUBERTMOTIONS
1. Zimmer's Motion to Exclude Dr. Vellturo's Opinions
Zimmer has moved to exclude Dr. Vellturo 's opinions (1) relying on the settlement
licensing agreements between Domoch Medical Systems, Bemis Manufacturing Company, and
the Educator Partnership to establish a reasonable royalty rate, (2) on the damages for alleged
infringement of the ' 428 patent calculated from an incorrect date, and (3) on calculations using
speculative manifold-per-day-rates, assumed equipment life expectancies, or unestablished
11
Stryker asserts that the IPR proceedings determined that there is no prior art showing an outlet opening moving
"below" where it was originally. (D.1. 391 at 18). However, a denial of institution of IPR proceedings is not a
decision on the merits. Moreover, as Zimmer notes, the IPR did not include all of the prior art asserted in this case.
(D.I. 351 at 35 n.5).
30
discount rates. (D.I. 323 at 19). Stryker opposes the motion arguing that (1) the Bemis licensing
agreement "is the most relevant in the record and is technically and economically comparable to
the accused products and the patents-in-suit" (D.I. 360 at 1), and (2) Dr. Vellturo ' s damages
calculations are legally proper and disagreements between experts are a matter of weight. (Id.) .
a. Bemis Licensing Agreement
"In determining the reasonable royalty, an expert witness may rely on existing royalty
agreements entered into at arms-length[,] as long as those agreements are sufficiently
comparable to the hypothetical license at issue in suit." WL. Gore & Assocs. v. C.R. Bard, 2015
WL 12731924, at *6 (D. Del. Nov. 4, 2015). To show that a license is "sufficiently
comparable," the expert must demonstrate "how similar or dissimilar the patented technology"
covered by the prior licenses is to the patents-in-suit, Lucent Techs. , Inc. v. Gateway, Inc., 580
F.3d 1301, 1331 (Fed. Cir. 2009), and "account for the technological and economic differences"
between the patented technology covered by the licenses and the patent-in-suit, ResQNet.corn,
Inc., 594 F.3d 860, 873 (Fed. Cir. 2010). Though "there is no per se rule barring reference to
settlements simply because they arise from litigation," AstraZeneca AB v. Apotex, 782 F.3d
1324, 1336 (Fed. Cir. 2015), the Federal Circuit has questioned "the propriety of using prior
settlement agreements to prove the amount of a reasonable royalty." LaserDynamics, Inc. v.
Quanta Comp., Inc., 694 F.3d 51, 77-78 (Fed. Cir. 2012) (noting "longstanding disapproval of
relying on settlement agreements to establish reasonable royalty damages"); see also M2M Sols.
LLC v. Enfora, Inc., 167 F. Supp. 3d 665, 678 (D. Del. 2016) ("Federal Circuit precedent is
hostile toward using litigation settlement agreements in proving a reasonable royalty, except in
limited circumstances.").
31
Zimmer moves to exclude Dr. Vellturo' s opinions to the extent he relies on the 2006
Bemis License agreements, on the grounds that this license is not technologically or
economically comparable to the patent-in-suit. (D.I. 323 at 8-14). Zimmer asserts that Dr.
Vellturo has failed to provide a basis for technological comparability. (D.I. 323 at 12). Zimmer
further argues that the license is not economically comparable to either the '920 or '428 patents
because it licenses the rights to multiple patents, sets multiple royalty rates, is a settlement
agreement, and was entered eight to eleven years before the hypothetical negotiations-a much
different context than a hypothetical negotiation involving two willing licensors. (D.I. 323 at 79). Stryker maintains that Dr. Vellturo's opinion, relying on Stryker' s technical expert,
establishes that "the 2006 Bemis License is the most relevant license in the record and is
economically and technologically comparable to the accused products and the patents-in-suit."
(D.I. 360 at 5).
The Bemis License Agreement between Domoch, Bemis, and Educator Partnership took
place on May 10, 2006, eight to eleven years before the hypothetical negotiations at issue here.
(D.I. 325-3 at 20). Domoch agreed to pay the licensors an initial lump sum payment of
$100,000, a second lump sum payment of $105 ,000 before April 1, 2007, and a royalty of 1% on
all sales of the licensed products with the minimum royalty being $100,000 each year, in return
for which Domoch received a non-exclusive worldwide license for three patents in relation to
specific products. (D.I. 325-3 at 21-24). Moreover, this agreement was a follow-on agreement
to a previous settlement agreement and therefore arose from litigation. (See D.I. 325-3 at 20
(reciting history of infringement allegations against Domoch, Domoch's assertions of invalidity
and non-infringement, and that "the Parties have settled this controversy by entering into this
32
License Agreement to avoid the expense, inconvenience, uncertainties and delay of further
proceedings called for by the Settlement Agreement.")).
Dr. Vellturo has not established "that the technology and value of the patents licensed in
the prior agreements are comparable to the technology and value of the patent-in-suit." Lucent,
580 F.3d at 1331. Dr. Vellturo uses broad and nebulous language to describe the technological
comparability of the patents in the Bemis license. See D.I. 325-1 at 112 ("At a broad level, the
patents licensed ... relate to inventions used to help reduce user exposure to surgical waste, and
thus provide benefits along the same general lines as .. . the ' 428 patent."); D.I. 325-2 at 66 ("I
similarly find that the inventions licensed . . . provide benefits along the same general lines as the
'920 Patented Invention."). Stryker's technical expert, Mr. Sheehan, also does not provide any
analysis of comparability. Instead, he generally identified the subject matter of the Bemis
patents. (D.I. 363-1 at 42 (stations for draining and cleaning canisters, specially designed
canisters, and a conduit with cleaning fluid placed within the canisters)). "[A]lleging a loose or
vague comparability between different technologies or licenses does not suffice."
LaserDynamics, 694 F.3d at 79. Therefore, Dr. Vellturo has failed to establish technological
comparability of the Bemis license.
Additionally, Dr. Vellturo has failed to show that the Bemis license is economically
comparable to the patents-in-suit. First, the Bemis license was "made in the context of settling a
litigation dispute, and thus did not reflect the royalty the parties would have reached just before
infringement began." MAZ Encryption Techs. LLC v. Blackberry Corp., 2016 WL 4490706, at
*1 (D. Del. Aug. 25, 2016). "Without analysis of the litigation, the conclusion cannot be based
on 'sound economic and factual predicates. "' AVM Techs., LLC v. Intel Corp., 927 F. Supp. 2d
139, 143 (D. Del. 2013). Dr. Vellturo engages in no analysis of the underlying litigation and
33
how it may have affected the royalty rate. (D.I. 325-1 , Ex. 4, ,r,r 83-93). Neither does Dr.
Vellturo address the effect of the fixed payments in addition to the royalty rate, the effect of
multiple patents being included in the license, or the fact that this license was one of a series of
licenses. (Id.). Because Dr. Vellturo 's analysis fails to demonstrate how technologically and
economically similar or dissimilar the Bemis license is, it is unreliable. Thus, Dr. Vellturo is
precluded from relying on the Bemis license in his reasonable royalty analysis.
b. Damages for the '428 Patent
Zimmer moves to exclude Dr. Vellturo 's damages analysis for the '428 patent as
unreliable because he uses an incorrect starting date. (D.I. 323 at 14). Stryker opposes the
motion on the grounds that Dr. Vellturo ' s methodology is reliable and it is a matter of accounting
to adjust the calculation using the correct start date. (D.I. 360 at 13). I agree with Stryker. The
start date for damages, at least in this case, is a legal issue. Moreover, Dr. Vellturo, in his reply
report agreed with Dr. Mady's adjusted damages calculation using his methodology and the
March 7, 2017 start date. (D.I. 363-1 at 13). Therefore, because there is no objection to the
underlying methodology, exclusion is unwarranted. Sys. Dev. Integration, LLC v. Comput. Sci.
Corp., 886 F. Supp. 2d 873 , 887 (N.D. Ill. 2012).
c. Intervening Rights
Zimmer moves to preclude Dr. Vellturo from testifying on calculations derived from
using manifold-per-day rates, equipment life expectancies, or discount rates. (D.I. 323 at 15).
Specifically, Zimmer argues that Dr. Vellturo ' s opinions regarding manifold-per-day use rates
and equipment life expectancies "are unreliable because they are premised on speculation and
incorrect assumptions." (D.I. 323 at 18). Stryker argues that Dr. Vellturo's use rate was based
34
"on Stryker data ... [and] the testimony of Stryker witnesses" and his equipment lifespan was
based on Stryker witness testimony. (D.I. 360 at 16-17).
"[I]f actual damages can not be ascertained with precision because the evidence available
from the infringer is inadequate, damages may be estimated on the best available evidence."
Sensonics, 81 F.3d at 1572. " [E]ven where defendant's records are not complete, damages may
' not be determined by mere speculation or guess."' Oiness v. Walgreen Co., 88 F.3d 1025, 1030
(Fed. Cir. 1996). Dr. Vellturo ' s lifespan and use rate estimation does not appear to be mere
speculation. He has pointed to specific evidence to support his estimations. (D.I. 325-2, Ex. 11
at ,r,r 32-34). To the extent that Zimmer disputes Dr. Vellturo 's analysis, it is an issue of weight
appropriate for cross-examination. Dr. Vellturo 's application of the discount rate is also an issue
of weight, not admissibility. Dr. Vellturo sufficiently identified the basis and source for his
discount rate. (D.I. 352-1 , Ex. 11 at Ex. 9-A, n.3). Therefore, exclusion is unwarranted.
2. Zimmer's Motion to Exclude the Opinions of Mr. Sterne
Zimmer moves to preclude Mr. Sterne, a patent attorney, from offering his opinion on
willful infringement, marking, and notice as to the ' 428 patent and on the priority date of the
' 920 patent. (D.I. 317).
a. Opinions on Willful Infringement
Zimmer asserts that Mr. Sterne' s opinions on willful infringement of the ' 428 patent
should be excluded as unhelpful to the factfinder, irrelevant, and without factual basis. (D.I. 318
at 9, 11 , 14). Stryker contends that Mr. Sterne is not a willfulness expert and that his opinions
addressing opinions of counsel and issues understood or known to a reasonable patent attorney
should not be excluded. (D.I. 361 at 6-7).
35
Mr. Sterne' s testimony regarding the opinions of counsel produced by Zimmer is
permissible to the extent he opines on the competency of the opinions of counsel as to the ' 428
patent. Despite Zimmer's contentions, Mr. Sterne' s testimony does not deviate into technical
territory and appears to be based on a reasonable methodology. To the extent Mr. Sterne has
provided contrary opinions in other cases, that is a matter for cross-examination.
However, Mr. Sterne's opinion that Zimmer' s reliance on the opinions of counsel was
unreasonable is impermissible testimony on the ultimate issue of willfulness. "Expert testimony
as to intent, motive, or state of mind offers no more than the drawing of an inference from the
facts of the case . .. and permitting expert testimony on this subject would be merely substituting
the expert's judgment for the jury' s and would not be helpful to the jury." Siring v. Oregon State
Bd. of Higher Educ., 927 F. Supp. 2d 1069, 1077 (D. Or. 2014). Therefore, Mr. Sterne's expert
opinions evaluating Zimmer' s subjective reliance on the opinions of counsel are excluded.
b. Marking/Notice
Zimmer asserts that Mr. Sterne has no basis for providing opinions in his report regarding
notice or patent marking under 35 U.S.C. § 287. (D.I. 318 at 14). Stryker asserts that Mr.
Sterne' s statements regarding notice and marking are appropriate background to his assessment
of Zimmer' s reliance on the four opinions of counsel. (D.I. 361 at 16).
Mr. Sterne' s expert report does not purport to offer an opinion on notice or marking. His
report merely relies on documents within the record for underlying facts in his analysis of
whether Zimmer's reliance on the opinions of counsel was reasonable. Mr. Sterne' s analysis,
sources, and conclusions can be tested through cross-examination. Therefore, exclusion is
unwarranted.
36
c. Certificate of Correction
Zimmer moves to exclude Mr. Sterne' s opinions regarding intent to deceive the PTO in
filing a certificate of correction because (1) expert testimony as to intent is improper, (2) Mr.
Sterne provides no basis for his conclusion, and (3) Mr. Sterne uses an improper "reasonable
patent attorney" standard. (D.I. 318 at 15-16). Stryker asserts that Mr. Sterne is not providing
improper opinion on intent, but merely providing expert testimony regarding PTO practices and
procedures. (D.I. 361 at 17-18).
I determine that Mr. Sterne's opinions regarding the ' 920 patent' s priority claim and the
filing of a certificate of correction are not entirely directed to intent. To the extent Mr. Sterne
provides testimony on the opportunities for a reasonable patent attorney would have had to
recognize and correct a priority claim, that testimony is permissible as it is helpful to the
factfinder to evaluate the deposition testimony from Zimmer' s prior patent counsel.
However, to the extent Mr. Sterne makes an explicit credibility determination regarding
Zimmer' s prior patent counsel's statements to the PTO (D .I. 319-1 at 51
,r 129), those opinions
are impermissible. "Expert testimony as to intent, motive, or state of mind offers no more than
the drawing of an inference from the facts of the case ... and permitting expert testimony on this
subject would be merely substituting the expert's judgment for the jury' s and would not be
helpful to the jury." Siring, 927 F. Supp. 2d at 1077. Thus, I will exclude ,r 129 of Mr. Sterne's
expert report as improper and unhelpful to the factfinder.
3. Stryker's Motion to Exclude Dr. Mody's Opinions
Stryker moves (1) to exclude Dr. Mody' s reasonable royalty calculations because she
fails to apportion to reflect the value of the patented invention, and (2) to exclude or to strike Dr.
37
Mody' s addition of lost profit and reasonable royalty damages for Stryker' s specimen collection
manifolds in her reply report. (D.I. 328 at 2-3).
a. Apportionment
Stryker moves to exclude Dr. Mody' s reasonably royalty analysis as unreliable based on
her failure to properly apportion between patented and unpatented components. (D.I. 328 at 5).
Zimmer contends that Dr. Mody's analysis considered all of the changes between the Neptune 1
and Neptune 2 in determining how to apportion the value of the '920 patent and nonpatented
features. (D.I. 353 at 4-5).
I determine that Dr. Mody' s analysis does reflect an apportionment analysis to determine
the value of the patented technology as required by law. Moreover, Dr. Mody' s analysis applies
a legally sound and verifiable methodology and appropriately relies on Mr. Meyst' s technical
opinions regarding the differences between the Neptune 1 and Neptune 2. (D.I. 354-1 , Ex. 3
,i,i 81-93; Ex. 4, ,i,i 428-432); see also Uniloc USA, Inc. v. Microsoft Corp., 632 F.3d 1292, 1318
(Fed. Cir. 2011). The Federal Circuit does not limit apportionment to specific methodologies
because flexibility is required to determine fact-dependent damages. See, e.g. , Ericsson v. D-Link
Sys. , Inc., 773 F.3d 1201, 1226 (Fed. Cir. 2014); Commonwealth Sci. & Indus. Research Org. v.
Cisco Sys., 809 F.3d 1295, 1301 (Fed. Cir. 2015). To the extent that Stryker disagrees with Dr.
Mody' s apportionment analysis, it is an issue of the weight of the evidence and witness
credibility. Therefore, Stryker' s motion is denied as to Dr. Mody' s reasonable royalty analysis.
b. Specimen Collection Manifolds
Stryker moves to exclude Dr. Mody' s opinion on damages for specimen collection
manifolds because it was untimely disclosed in her reply report and legally flawed. (D.I. 328 at
9-10). Zimmer alleges that the disclosure was not untimely, Stryker suffered no prejudice
38
because its damages expert addressed specimen collection manifolds in his report, and inclusion
of these manifolds in Dr. Mody ' s calculation oflost profits is proper. (D.I. 353 at 11-15).
Dr. Mody' s addition of lost profits for specimen collection manifolds in her reply report
is a violation of Federal Rule of Civil Procedure 26(a). In determining whether a violation of
Rule 26(a) was substantially justified or harmless, courts consider the following factors: (1) the
importance of the information withheld; (2) the prejudice or surprise to the party against whom
the evidence is offered; (3) the likelihood of disruption of the trial; (4) the possibility of curing
the prejudice; (5) the explanation for the failure to disclose; and (6) the presence of bad faith or
willfulness in not disclosing the evidence (the "Pennypack factors"). See Konstantopoulos v.
Westvaco Corp., 112 F .3d 710, 719 (3d Cir.1997) (citing Meyers v. Pennypack Woods Home
Ownership Ass'n, 559 F.2d 894, 904- 05 (3d Cir.1977)). It bears emphasis that "exclusion of
critical evidence is an ' extreme' sanction, not normally to be imposed absent a showing of
willful deception or flagrant disregard of a court order by the proponent of the evidence." In re
Paoli R.R. Yard PCB Litig. , 35 F.3d 717, 791 - 92 (3d Cir.1994) (internal quotation marks
omitted). The determination of whether to exclude evidence is committed to the discretion of the
Court. See id. at 749.
The portion of the report which Stryker seeks to exclude does not solely "contradict or
rebut" evidence raised in Stryker' s rebuttal report. (D.I. 32, 11 la; D.I. 86, 16a). Thus, I agree
with Stryker that Dr. Mody' s disclosure of damages figures for the specimen collection
manifolds is untimely. Turning to the Pennypack factors, Dr. Mody' s opinion is undeniably
important given the amount of damages sought, which weighs against excluding the evidence.
There is little prejudice or surprise to Stryker, however, as Stryker' s own expert, Dr. Vellturo,
included those manifolds in his own damages calculations. To the extent there is any prejudice,
39
that prejudice may be cured by permitting Stryker to file a sur-reply report. It does not appear
that there was any bad faith in the belated disclosure. Therefore, Dr. Mody's opinions will not
be excluded under the Pennypack factors.
Additionally, I determine that Dr. Mody' s opinions on specification collection manifolds
are not legally flawed or unreliable. She applies the same methodology as she does for the other
manifolds that Stryker sells. To the extent that Stryker disputes her analysis, that is a weight
issue appropriately dealt with on cross examination. Therefore, I deny Stryker' s motion to
exclude Dr. Mody's analysis, but grant Stryker' s request to provide a sur-reply report.
4. Stryker's Motion to Exclude Mr. Lentz's Opinions
Stryker moves to exclude the following opinions of Mr. Lentz: (1) Zimmer
communications show that Zimmer was reasonable with respect to the '428 patent; (2) opinions
on the state of mind and intent of various individuals; (3) technical opinions; (4) opinions about
Stryker' s alleged behavior regarding the ' 920 patent; and (5) explanation of standard practices
that are not applicable to Zimmer. (D.I. 328 at 3).
a. Opinions of Counsel
Stryker moves to exclude Mr. Lentz's opinions relying on four opinions of counsel on
other Stryker patents and non-accused Zimmer products as irrelevant to willfulness. (D.I. 328 at
14). Zimmer contends that Mr. Lentz' s opinions merely opine on "corporate practice from the
perspective of an in-house patent attorney" and provide context for the factfinder to determine
the issue of intent. (D.I. 353 at 15-16).
I do not believe this issue is appropriately addressed under Daubert. The parties appear
to be disputing the relevance of the opinions of counsel and Zimmer' s course of conduct before
the '428 patent issued. (See D.I. 328 at 15 (" [a]n opinion of counsel . . . is not relevant"); D.I.
40
353 at 16 ("pre-patent issuance conduct . .. is relevant")). This is not a Daubert inquiry. To the
extent that these issues are relevant, Mr. Lentz's opinions provide appropriate expert testimony
to contextualize Zimmer's actions for the purposes of willful infringement. Therefore, Stryker' s
motion is denied as to Mr. Lentz's opinions regarding the opinion of counsel documents.
b. State of Mind Opinions
Stryker moves to exclude Mr. Lentz' s opinions regarding the filing of the certificate of
correction for the '920 patent as improper testimony on state of mind. 12 (D.I. 328 at 16).
Zimmer contends that Mr. Lentz's opinion merely sets out the fact that the declarations were
signed subject to penalties and ethical obligations, as well as the standard by which the Patent
Office reviews the petition. (D.I. 353 at 17).
I find that the majority of the testimony Stryker seeks to exclude is permissible expert
opinion testimony regarding standards which are helpful to the factfinder in evaluating the
behavior of Zimmer's patent prosecution counsel. However, Mr. Lentz does improperly opine
on state of mind in ,r 84 of his report. Specifically, I will exclude the statement, "If Mr. Johnston
had realized his mistake, he almost certainly would have corrected it (especially given that he
realistically had nothing to gain by not correcting it) .. . ." as this statement is clear improper
testimony on state of mind and intent.
c. Technical Opinions
Stryker contends that Mr. Lentz, despite not being designated as a technical expert,
repeatedly offers technical opinions throughout his report. (D.I. 328 at 18). Zimmer argues that
Mr. Lentz has not offered technical opinions, but rather an opinion on "how companies analyze
and clear patents when designing and releasing products." (D.I. 353 at 18).
12
I do not understand Mr. Lentz to be a witness before the jury at the ' 920 trial.
41
The paragraphs that Stryker seeks to exclude contain what appears to be Mr. Lentz's
recitation of what Zimmer's attorneys understood at the time. However, the paragraphs also
include statements by Mr. Lentz that purport to testify on a technical understanding of the '428
patent family and the differences between the patents. These statements are impermissible.
Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1364-65 (Fed. Cir. 2008)
("Allowing a patent law expert without any technical expertise to testify on the issues of
infringement and validity amounts to nothing more than advocacy from the witness stand.").
Thus, to the extent Mr. Lentz purports to provide his own opinion of technological differences,
his testimony and opinion is excluded.
d. Opinion of Stryker's Actions
Stryker contends that Mr. Lentz's opinions regarding Stryker's prior willful infringement
should be excluded as irrelevant and unhelpful to the trier of fact. (D.I. 328 at 19). While
Zimmer does not dispute the irrelevancy of these opinions, it argues that Stryker' s own expert,
Mr. Sterne, offers an opinion that Zimmer' s prior willful infringement of unrelated patents is
relevant to Zimmer' s alleged willful infringement of the ' 428 patent. (D.I. 353 at 19). I
determine neither opinion is relevant or helpful to the trier of fact and exclude both experts'
opinions on previous actions in regards to unrelated patents.
e. Explanation of Standard Practices
Stryker contends that Mr. Lentz's explanation of standard practices will not assist the
factfinder and therefore should be excluded under Rule 702. (D.I. 328 at 19-20). Zimmer argues
that Mr. Lentz provides an opinion on customary behavior which will help the jury to evaluate
Zimmer's behavior regarding the ' 428 patent. (D.I. 353 at 20).
42
Stryker asserts that Mr. Lentz' s testimony is both irrelevant and meant to confuse the jury
because he provides testimony about standard practices but does not opine on whether Zimmer
followed those internal procedures. (D.I. 328 at 20). To the extent Mr. Lentz' s opinions may
give the jury a frame of reference upon which to base its conclusion about Zimmer' s behavior,
his opinions are relevant. Therefore, Stryker' s motion is denied as to these paragraphs.
5. Stryker's Motion to Exclude and Strike Opinions of Mr. Meyst
Stryker asks the Court to exclude Mr. Meyst's opinions regarding noninfringing
alternatives and to strike his untimely doctrine of equivalents opinion offered on reply. (D.I. 324
at 2).
a. Noninfringing Alternatives
Stryker asserts that Mr. Meyst's opinion regarding noninfringing alternatives should be
excluded as contrary to law. (D.I. 324 at 4). Stryker asserts that Mr. Meyst "wrongly assessed
[noninfringing alternatives] in view of the allegedly infringing products" instead of Zimmer' s
products. (D.I. 324 at 5). Zimmer alleges that Mr. Meyst "analyzed whether Stryker' s proposed
noninfringing substitutes had the features demanded by customers and were acceptable
alternatives to the system claimed in the ' 920 patent" and therefore his opinion should not be
excluded. (D.I. 355 at 2).
"To recover lost profits, the patent owner must show ' causation in fact,' establishing that
' but for ' the infringement, he would have made additional profits." Grain Processing Corp. v.
Arn. Maize-Prod. Co., 185 F.3d 1341 , 1349 (Fed. Cir. 1999). A patentee may show causation by
either establishing a two-supplier market, Micro Chern., Inc. v. Lextron, Inc. , 318 F.3d 1119,
1125 (Fed. Cir. 2003), or the absence of noninfringing alternatives in the market. To establish
the absence of noninfringing alternatives, " [t]he correct inquiry . . . is whether a non-infringing
43
alternative would be acceptable compared to the patent owner's product, not whether it is a
substitute for the infringing product." Presidio Components, Inc. v. Am. Tech. Ceramics Corp. ,
875 F.3d 1369, 1381 (Fed. Cir. 2017). Zimmer asserts that Presidio is inapposite as Mr. Meyst's
analysis reflects the two-supplier market for high fluid waste management systems. (D.I. 355 at
2). Yet the parties appear to dispute whether a two-supplier market exists. (D.I. 392 at 2).
Mr. Meyst' s opening report (D.I. 331 , Ex. 503) and his rebuttal report (id. at Ex. 505)
discuss noninfringing alternatives by comparing them to the accused infringing product and the
patented system. (Id. at Ex. 503
,r,r 428-32, Ex. 505 ,r,r 81-99).
Mr. Meyst then stated at
deposition that he did not compare the purported non-infringing alternatives to Zimmer's
products in determining whether the purported alternatives would be acceptable. (D.I. 333 , Ex.
1000 at 216:2-10). This is a legally incorrect analysis.
However, Zimmer also notes that Mr. Meyst's opinions "provide Zimmer' s damages
expert [with] a technical perspective on the substantial features [that differ] between the [noninfringing] Neptune 1 and the [accused infringing] Neptune 2 systems," which underlies her
apportionment analysis for reasonable royalties. (D.I. 355 at 3). Therefore, Mr. Meyst will be
precluded from offering his opinions (D.I. 331 at Ex. 503
,r,r 428-32, Ex. 505 ,r,r 81-99) for the
purposes of noninfringing alternatives because they are unreliable and irrelevant. However,
Zimmer's damages expert will not be precluded from relying on these opinions in her
apportionment analysis.
b. Doctrine of Equivalents Opinion
Stryker moves to strike Mr. Meyst's doctrine of equivalents opinion on claims 20 and 35
of the ' 920 patent as an untimely disclosed new theory. (D.I. 324 at 5-6). Specifically, Stryker
asserts that Mr. Meyst' s opening report did not allege infringement of claims 20 and 35 under the
44
doctrine of equivalents. (D.I. 324 at 6). Zimmer argues that Mr. Meyst does not offer a new
opinion on reply, or if he does, that the Pennypack factors weigh against exclusion of Mr.
Meyst's opinion. (D.I. 355 at 3-5).
"Plaintiffs should not be permitted to advance a new infringement theory in their reply
report." HSM Portfolio LLC v. Elpida Mem. , Inc. , 2016 WL 552543 , at *2 (D. Del. Feb. 11 ,
2016) (citing Fed. R. Civ. P. 26(a)(2)(D)(ii); MobileMedia Ideas, LLC v. Apple, Inc., 2012 WL
6019305, at *1 (D. Del. Dec. 3, 2012)). Here, Mr. Meyst did not allege a doctrine of equivalents
theory of infringement for claims 20 and 35 in his opening report. (D.I. 331, Ex. 503
,r,r 129-31 ,
229-31 , 319-21, 412-14). After Stryker' s expert offered opinions ofno infringement (D.I. 334 at
94-97, 122-23), Mr. Meyst included doctrine of equivalents opinions for claims 20 and 35 for the
first time. (D.I. 331 , Ex. 505
,r,r 32-36, 40, 69-73 , 77).
In determining whether to exclude expert testimony, courts consider the Pennypack
factors. See Konstantopoulos , 112 F.3d at 719. While it is true that Stryker had the opportunity
to depose Mr. Meyst on his infringement theories, I am not convinced that it is sufficient to cure
the prejudice. If Zimmer had timely disclosed this infringement theory, Stryker' s expert may
have been able to assert different theories of non-infringement. Additionally, Stryker has alleged
that the untimely disclosure was intentional and in bad faith because Mr. Meyst's opening report
did disclose doctrine of equivalents theories for other asserted claims. (D.I. 324 at 6). While
there seems to be little risk that permitting this theory would disrupt the trial, that by itself does
not overcome the prejudice to Stryker. Therefore, with respect to the new infringement theory
for claims 20 and 35 raised in Mr. Meyst's reply report, Stryker's motion is granted.
45
6. Stryker's Motion to Exclude Opinions of Dr. Layton
Stryker moves to exclude various opinions of Dr. Layton as unreliable, contrary to the
Court' s claim construction, or untimely. (D.I. 324 at 2).
a. Obviousness Opinions
First, Stryker moves to exclude "Dr. Layton' s opinions alleging that the ' 428 patent
claims are obvious based on the Transposal High Fluid Cart[] used with a ' CLlO0' or ' CL200'
lid are unreliable because he inappropriately relies on irrelevant, insufficient and unreliable
documents." (D.I. 324 at 2). Stryker asserts that Dr. Layton relies on unreliable facts and data in
his obviousness opinion including exhibits and documents that post-date the priority date and
unauthenticated exhibits and documents. (D.I. 324 at 8-11). Zimmer argues that Stryker
misrepresents the facts and data Dr. Layton relies on because it fails to acknowledge certain
witnesses who are familiar with the Transposal system as sold before the ' 428 patent's priority
date. (D.I. 355 at 8-9). Moreover, Zimmer asserts that the sufficiency of the evidence is the
province of the jury and an inappropriate matter for a Daubert motion. (Id. at 9). Finally,
Zimmer asserts that post-priority-date or undated documents may corroborate contemporaneous
documentary and physical evidence. (Id. at 10).
Dr. Layton relies on a variety of evidence to assert that the Transposal high fluid cart had
certain features prior to the critical date. To the extent he relies on evidence that is undated,
post-dated, or physical evidence that was possibly modified between the alleged prior sale and
the examination by the expert, he has not provided any reliable basis for drawing the inference
that the characteristics of the items he examined were present in a product sold prior to the
critical date. "This falls short of a reliable opinion based on [Dr. Layton's] scientific, technical
or specialized knowledge, as required by Rule 702." XpertUniverse, Inc. v. Cisco Sys., Inc.,
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2013 WL 1702159, at* 1 (D. Del. Feb. 25, 2013). Moreover, "[t]he danger of unfair prejudice of
[Dr. Layton's] opinion on this ultimate inference ... would also substantially outweigh its
probative value." Id. (citing Fed. R. Evid. 403). However, Dr. Layton may provide his narrower
opinions regarding the exhibits he examined and the circumstantial evidence surrounding those
exhibits and documents. The ultimate conclusion of whether these characteristics were present
in the prior art is properly left for the factfinder to evaluate. Xpert, 2013 WL 702159, at * 1.
Therefore, Stryker' s motion is granted as to Dr. Layton's broad opinion that the Transposal high
fluid cart sold before the critical date contained features that would make the '428 patent
obvious.
b. Opinions Regarding "Fluid Communications Path"
Stryker moves to exclude Dr. Layton' s opinions that the accused products do not a have a
"fluid communications path" as contrary to the court's claim construction. (D.I. 324 at 14).
Specifically, Stryker attacks Dr. Layton' s opinion that "the ' fluid communications path' requires
a structure and cannot be a opening or gap." (D.I. 324 at 14). Zimmer argues that Dr. Layton' s
opinions are not contradictory to the court's claim construction. (D.I. 355 at 12).
I construed the claim term "a fluid communications path from the bore of said first
receiver into said first canister" consistent with its plain and ordinary meaning, "a path for
conveying fluid from the receiver bore into the first canister". (D.I. 276 at 23). Relying on the
doctrine of claim differentiation, I specifically determined that "'path' should be given a broader
scope than ' conduit. "' (D.I. 276 at 24). Dr. Layton's opinion is not inconsistent with that
construction, nor is it an improper attempt to resurrect Zimmer's conduit argument from the
Markman hearing. Therefore, Stryker' s motion is denied as to Dr. Layton's opinions on the
"fluid communications path" limitation.
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c. Opinions and Statements Regarding "Housing" and "Outlet
Opening at the Proximal End"
Stryker moves to exclude Dr. Layton' s noninfringement opinions about the "housing"
and the "outlet opening at the proximal end [of the housing]" because they are unreliable and
based on a misunderstanding of the governing claim construction. (D.I. 324 at 15). Zimmer
asserts that Stryker' s motion is an attempt to request a construction of the term "housing" and
fails to explain why Dr. Layton' s opinion should be excluded. (D.I. 355 at 14).
Dr. Layton' s opinions are not inconsistent with the governing claim constructions. Dr.
Layton does not suggest that the manifold must have a "closed end." While I did not explicitly
construe housing to mean "outer enclosure," I determined that "the disputed claims already
capture[d] this requirement" and, therefore, I did not need to read Zimmer' s proposal into the
disputed limitation. (D.I. 276 at 20). Thus, I do not find Dr. Layton's opinions inconsistent with
the governing claim constructions. However, to the extent that Dr. Layton suggests that I
defined the housing as an outer enclosure, that opinion shall be excluded as contrary to what I
actually held.
d. Reply Opinion Relying on Blake Reference
Stryker moves to strike Dr. Layton' s reply report opinion that the Blake 13 reference
should be added in the obviousness combination for claim 1. (D.I. 324 at 19). Specifically,
Stryker contends that Dr. Layton never relied on a combination with Blake for claim 1 nor
explained how Blake satisfied the specific elements of claim 1 in his opening report. (D.I. 324 at
20). Zimmer argues, "Neither the Blake reference nor the combination was new or a surprise to
Stryker," because Dr. Layton "explained that claim 4, which depends from claim 1, would have
13
U.S. Patent No. 4,737, 148.
48
been obvious based on the Transposal High Fluid Cart in view of Adahan and Blake." (D.I. 355
at 18). Zimmer asserts that because claim 4 depends from claim 1, Dr. Layton necessarily
applied that combination to claim 1 as well.
The Pennypack factors do not favor exclusion of Dr. Layton' s reply opinions. The Blake
reference was disclosed in Dr. Layton' s initial report. It was used in an obviousness combination
for a dependent claim of claim 1, which inherently implicates the independent claim' s validity.
See, e.g. , Callaway Gold Co. v. Acushnet Co., 576 F.3d 1331 , 1344 (Fed Cir. 2009). Stryker was
able to depose Dr. Layton on this reply opinion, and there does not appear to be any bad faith
action by Zimmer. Moreover, to the extent there is any prejudice to Stryker, I find that this
prejudice can be remedied by allowing Stryker' s expert to file a supplemental report addressing
the Blake combination for claim 1 of the '428 patent. Therefore, Stryker's motion to strike is
denied.
IV.
CONCLUSION
For the foregoing reasons, the motions are resolved as follows:
1. Zimmer' s motion for partial summary judgment as to priority date (D.I. 309) is
GRANTED;
2. Zimmer' s motion for partial summary judgment of no invalidity for double patenting
(D.I. 310) is GRANTED;
3. Zimmer's motion for partial summary judgment of no invalidity for recapture (D.I.
311) is GRANTED;
4. Zimmer' s motion for partial summary judgment of no intervening rights defense (D.I.
312) is DENIED;
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5. Zimmer' s motion for partial summary judgment of no infringement (D.I. 313) is
DENIED;
6. Stryker' s motion for summary judgment (D.I. 316) is DENIED;
7. Stryker' s cross-motion for summary judgment (D.I. 356) is DENIED;
8. Stryker' s supplemental motion for summary judgment (D.I. 411) is DENIED;
9. Zimmer' s motion to exclude the testimony of Mr. Sterne (D.I. 317) is GRANTED as
to his opinions evaluating Zimmer' s reliance on opinions of counsel and ,r 129 of his
report and DENIED as to all else;
10. Zimmer' s motion to exclude the testimony of Dr. Vellturo (D.I. 321) is GRANTED
as to the Bemis License and DENIED as to all else;
11. Stryker' s Motion to exclude and strike opinions and testimony of Dr. Mody and Mr.
Lentz (D.I. 327) is DENIED as to Dr. Mody' s opinions and Mr. Lentz' s opinions on
the opinions of counsel and standard practices, and GRANTED as to Mr. Lentz' s
technical opinions, the above-identified statement in his report, and his opinion of
Stryker' s previous actions;
12. Stryker' s motion to exclude and strike opinions and testimony of Dr. Layton and Mr.
Meyst (D.I. 322) is GRANTED as to Mr. Meyst's doctrine of equivalents opinion for
claims 20 and 35, GRANTED-IN-PART as to Dr. Layton' s opinion as to the features
of the prior art sales and Mr. Meyst's noninfringing alternatives opinion, and
DENIED as to Dr. Layton's opinions on noninfringement and the Blake reference.
An accompanying order will be entered.
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