Baxter International, Inc. v. CareFusion Corporation et al

Filing 231

MEMORANDUM Opinion and Order signed by the Honorable Virginia M. Kendall on 3/10/2020. Defendants' Motion for Judgment on the Pleadings 215 is granted in part and denied in part. Defendants' Motion to Dismiss 215 Baxter's infringement claim as to claims 4 and 912 of the '560 patent is granted in part and denied in part. See Opinion for further details. Mailed notice(lk, )

IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION
BAXTER INTERNATIONAL, INC.,
Plaintiff,
v.
CAREFUSION CORPORATION, and
BECTON, DICKINSON AND
COMPANY,
Defendants.

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No. 15 C 9986
Judge Virginia M. Kendall

MEMORANDUM OPINION AND ORDER
Plaintiff Baxter International (“Baxter”) sued CareFusion Corporation and Becton,
Dickinson and Company (collectively, “Defendants”) for infringement of three medical infusion
pump patents, U.S. Patent Nos. 5,764,034 (the ‘034 Patent), 5,782,805 (the ‘805 Patent), and
6,231,560 (the ‘560 Patent). (Dkt. 29.) Defendants counterclaimed seeking a declaratory judgment
that the patent claims are invalid and therefore cannot be infringed. (Dkt. 49.) Before the Court is
Defendants’ Motion for Judgment on the Pleadings for non-infringement and invalidity as to
claims 5 and 24–35 of the ‘805 Patent, claims 1–3, 6–7, and 16 of the ‘560 Patent, and claims 1–
4 and 9–12 of the ‘034 Patent. (Dkt. 215.) Defendants also move to dismiss Baxter’s claim for
infringement as to claims 4 and 9–12 of the ‘560 Patent for lack of prosecution. (Id.) For the
reasons set forth below, both Motions are granted in part and denied in part.
BACKGROUND
Baxter’s Amended Complaint alleges infringement of various patent claims for each of the
three patents at issue. (Dkt. 29.) Defendants counterclaimed alleging patent invalidity and noninfringement. (Dkt. 49.) Defendants subsequently filed petitions with the Patent Trial and Appeal

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Board (“PTAB”) to conduct inter partes review of the ’034 and ’560 Patents. (See Dkt. 217-1.)
Defendants then filed a motion to stay litigation during the pendency of the PTAB proceedings,
which this Court granted. (Dkts. 84, 138.) PTAB issued final written decisions in 2018 in which it
found that claims 1–4 and 9–12 of the ‘034 Patent and claims 1–3, 6–7, and 16 of the ‘560 Patent
were all unpatentable. (Dkt. 217-1.) Defendants subsequently filed the instant Motions. (Dkt. 215.)
During the pendency of these Motions, Baxter filed paperwork with the Patent and Trademark
Office (“PTO”) to disclaim some of the patent claims that are subjects of this litigation. (Dkt. 2192.)
LEGAL STANDARD
Federal Rule of Civil Procedure 12(c) provides that “[a]fter pleadings are closed—but early
enough not to delay trial—a party may move for judgment on the pleadings.” “Judgment on the
pleadings is appropriate when there are no disputed issues of material fact and it is clear that the
moving party . . . is entitled to judgment as a matter of law.” Unite Here Local 1 v. Hyatt Corp.,
862 F.3d 588, 595 (7th Cir. 2017). “To survive a motion for judgment on the pleadings, ‘a
complaint must state a claim to relief that is plausible on its face.’” Bishop v. Air Line Pilots Ass'n,
Int'l, 900 F.3d 388, 397 (7th Cir. 2018) (quoting Wagner v. Teva Pharm. USA, Inc., 840 F.3d 355,
358 (7th Cir. 2016)). In ruling on a Rule 12(c) motion, the Court accepts as true all facts alleged
in the complaint and construes all reasonable inferences in favor of the non-moving party.
See Pisciotta v. Old Nat. Bancorp, 499 F.3d 629, 633 (7th Cir. 2007) (citing Thomas v.
Guardsmark, Inc., 381 F.3d 701, 704 (7th Cir. 2004)). The Court applies that same standard to a
motion to dismiss under Rule 12(b)(6). See Buchanan-Moore v. Cty. of Milwaukee, 570 F.3d 824,
827 (7th Cir. 2009) (“We review Rule 12(c) motions by employing the same standard that applies
when reviewing a motion to dismiss for failure to state a claim under Rule 12(b)(6).”).

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DISCUSSION
A.

Judgment on the Pleadings for Indefinite Claims of the ‘805 Patent

Defendants seek judgment on the pleadings as to claims 5 and 24–35 of the ‘805 Patent
because the Court has already found these claims to be indefinite, such that they cannot give rise
to infringement liability. See Baxter Int’l, Inc. v. CareFusion Corp., 15 C 9986, 2019 WL 1897063,
at *4 (N.D. Ill. Apr. 29, 2019) (holding that Baxter’s use of the term “means for sensing tube
restrictions” in claims 5 and 24 of the ‘805 Patent is indefinite). Baxter now concedes that all of
its asserted claims that rely upon claims 5 and 24 of the ‘805 Patent—i.e., claims 25–26, 28–31,
and 35 of the ‘805 Patent—are also indefinite. But the parties continue to dispute two issues with
respect to ‘805 Patent claims: (1) whether the Court should issue declaratory judgment of noninfringement as to these claims or instead dismiss them as moot and (2) whether the Court should
also render judgment as to claims 27 and 32–34 of the ‘805 Patent.
i.

Proper Disposition of the Disputed ‘805 Patent Claims

The Court has already determined that claims 5 and 24 of the ‘805 Patent are indefinite.
Because the claims are indefinite, they are invalid and therefore cannot be infringed. See Nautilus,
Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 902 (2014) (explaining that a “lack of definiteness”
renders a patent claim invalid). Thus, Defendants are entitled to judgment as a matter of law
because they could not have infringed the uninfringeable. Baxter relies on Honeywell Int’l v. Int’l
Trade Com’n, 341 F.3d 1332 (Fed. Cir. 2003) for the proposition that the Court should dismiss
these non-infringement counterclaims as moot, but its reliance on that case is inapposite.
Honeywell instructs that courts should not perform infringement analyses on indefinite claims, i.e.,
comparing unconstruable claims to accused products. But the Court need not perform an
infringement analysis to determine that Defendants are entitled to judgment on the pleadings as to

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non-infringement of claims 5 and 24 of the ‘805 Patent. See Cybor Corp. v. FAS Techs., Inc., 138
F.3d 1448, 1454 (Fed. Cir. 1998) (explaining that an infringement analysis is a two-step process
by which courts first determine the scope and meaning of patent claims and then compare those
claims to the allegedly infringing product). Here, all the Court did to make an indefiniteness
determination was to assess the claims themselves; there was no need to engage in the second step
of an infringement analysis. Honeywell’s mootness rule does not apply in this case and Defendants
could not have infringed indefinite patent claims, so Defendants are entitled to judgment on the
pleadings as to their non-infringement and invalidity counterclaims regarding claims 5, 24–26, 28–
31, and 35 of the ‘805 Patent. 1
ii.

Claims 27 & 32–34 of the’805 Patent

This Court lacks authority to grant declaratory relief absent an actual case or controversy.
MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118, 126 (2007). “An actual controversy is one that
is ‘definite and concrete . . . real and substantial’ and [allows] specific relief through a decree of a
conclusive character, as distinguished from an opinion advising what the law would be upon a
hypothetical state of facts.” Id. at 127 (quoting Aetna Life Ins. Co. v. Haworth, 300 U.S. 227, 240–
41 (1937)). The burden of demonstrating that an actual controversy exists lies with the party
seeking declaratory relief from the Court. See Benitech Australia, Ltd. v. Nucleonics, Inc., 495
F.3d 1340, 1344 (Fed. Cir. 2007).
Baxter did not allege in its Amended Complaint that Defendants infringed on claims 27 or
32–34 of the ‘805 Patent. (See Dkt. 29 ¶ 34.) As such, no case or controversy as to those claims is
currently before the Court. Defendants have failed to meet their burden to demonstrate that this

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The parties agree that each of these claims depend on claims 5 and 24 of the ‘805 Patent, so because Defendants are
entitled to judgment on the pleadings as to claims 5 and 24, they are also entitled to judgment on the pleadings as to
claims 25–26, 28–31, and 35.

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Court has declaratory judgment jurisdiction as to claims 27 and 32–34, so the Court denies
Defendants’ Motion for Judgment on the Pleadings as to those patent claims.
B.

Judgment on the Pleadings as to Patent Claims that PTAB Found Invalid

PTAB issued final written decisions finding that claims 1–4 and 9–12 of the ‘034 Patent
and claims 1–3, 6–7, and 16 of the ‘560 Patent are unpatentable and therefore invalid. (Dkt. 2171 at pp. 31, 74, 113.) Defendants now seek judgment on the pleadings for invalidity and noninfringement of those claims, arguing that because PTAB declared these claims invalid, Baxter is
collaterally estopped from claiming their validity in this case. Baxter suggests, by contrast, that
because Baxter has since filed papers at the PTO seeking to disclaim each of these claims, that this
Court no longer has jurisdiction to grant judgment of invalidity and non-infringement. The
question before the Court for purposes of these claims is whether such a disclaimer renders moot
the dispute over those claims in this Court and, if so, whether Baxter’s disclaimer was effective.
Once a patent owner disclaims its patent claims, “any infringement-based dispute
concerning those claims” is rendered moot. Sanofi-Aventis U.S., LLC v. Dr. Reddy's Labs., Inc.,
933 F.3d 1367, 1373 (Fed. Cir. 2019). Therefore, if Baxter did disclaim any patent claims, that
disclaimer would “moot[] any controversy over them.” Id.
Defendants challenge whether Baxter has provided sufficient documentation evidencing
their disclaimers and whether the disclaimers were timely. As evidence of its disclaimers, Baxter
submitted to the Court disclaimer forms for claims 1–4 and 9–12 of the ’034 Patent and claims 1–
3, 6–7, and 16 of the ’560 Patent. (Dkt. 219-2.) The forms indicate that Baxter filed them on
January 6, 2020, one day before Baxter submitted its response brief to this Court for the instant
Motions. (Id.) Baxter provided receipts from the PTO to demonstrate that it filed disclaimers for
each of these claims. (Id.) The dates on the disclaimer forms match the dates on the receipts. (Id.)

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Defendants doubt whether Baxter successfully filed disclaimers at the PTO, but the Court trusts
the representations made by officers of the Court and finds the documentation provided to be
persuasive evidence of disclaimer. The Court therefore holds that Baxter has sufficiently
demonstrated that it disclaimed claims 1–4 and 9–12 of the ’034 Patent and claims 1–3, 6–7, and
16 of the ’560 Patent. The fact that Baxter disclaimed these patent claims during the pendency of
this litigation does not alter the fact that the disclaimers render the dispute over them in this Court
moot. See Sanofi-Aventis, 933 F.3d at 1371–73 (holding that any controversy over patent claims
for which disclaimers were filed with the PTO during the pendency of the litigation is rendered
moot); see also Bond v. Utreras, 585 F.3d 1061 (7th Cir. 2009) (explaining that an actual
controversy must exist at all stages of review or else the claim is moot). In keeping with SanofiAventis, this Court finds that any case or controversy that once existed regarding claims 1–4 and
9–12 of the ‘034 Patent and claims 1–3, 6–7, and 16 of the ‘560 Patent is now moot.
Defendants’ Motion for Judgment on the Pleadings on its counterclaim for claims 1–4 and
9–12 of the ’034 Patent and claims 1–3, 6–7, and 16 of the ’560 Patent is denied. Instead, the Court
dismisses with prejudice as moot all remaining claims and counterclaims brought under claims 1–
4 and 9–12 of the ’034 Patent and claims 1–3, 6–7, and 16 of the ’560 Patent.
C.

Motion to Dismiss Claims 4 and 9–12 of the ‘560 Patent

Defendants request that this Court dismiss with prejudice Baxter’s infringement claims
regarding claims 4 and 9–12 of the ‘560 Patent, and Baxter does not oppose such a dismissal. The
parties do dispute, however, whether that dismissal should be made pursuant to Rule 41(b) for lack
of prosecution or pursuant to the Court’s inherent authority.
A Rule 41(b) dismissal is inherently an involuntary one; indeed, the Rule is entitled
“Involuntary Dismissal.” Here, however, both parties agree to the dismissal of these claims. Thus,

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the dismissal cannot be said to be involuntary. Moreover, courts typically order dismissal for want
of prosecution in cases where “there is a clear record of delay or contumacious conduct.” Williams
v. Chicago Bd. of Educ., 155 F.3d 853, 857 (7th Cir. 1998) (quotations omitted). District courts
must also warn litigants prior to dismissing cases for want of prosecution. Id. The Court has issued
no such warning in this case nor have Defendants suggested that Baxter has used dilatory tactics
or engaged in contumacious conduct. The Court therefore relies on its inherent authority, not Rule
41(b), to dismiss with prejudice Baxter’s infringement claim as to claims 4 and 9–12 of the ‘560
Patent.
CONCLUSION
Defendants’ Motion for Judgment on the Pleadings [215] is granted in part and denied in
part. The Court grants judgment on the pleadings (and therefore a declaratory judgment) in favor
of Defendants on their counterclaim for invalidity and non-infringement as to claims 5, 24–26, 28–
31, and 35 of the ‘805 Patent. The Court denies the Motion with respect to claims 27 and 32–34
of the ’805 Patent for lack of an actual case or controversy. The Court also denies the Motion for
Judgment on the Pleadings as to claims 1–4 and 9–12 of the ’034 Patent and claims 1–3, 6–7, and
16 of the ’560 Patent. Instead, the Court dismisses with prejudice Baxter’s infringement claims as
to claims 1–4 and 9–12 of the ’034 Patent and claims 1–3, 6–7, and 16 of the ’560 Patent because
they are moot.

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Defendants’ Motion to Dismiss [215] Baxter’s infringement claim as to claims 4 and 9–12
of the ‘560 patent is granted in part and denied in part. The Court dismisses this infringement claim
with prejudice not for lack of prosecution, but rather pursuant to the Court’s inherent authority to
dismiss claims by agreement of the parties.

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Virginia M. Kendall
United States District Judge
Date: March 10, 2020

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