COOK INCORPORATED v. ENDOLOGIX, INC.

Filing 299

ENTRY - Endologix's Motion for Leave to File Motion For Summary Judgment of No Contractual Estoppel and No Willful Infringement (Dkt. 264 ) is DENIED. Signed by Judge Tanya Walton Pratt on 8/30/2012. (JD)

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF INDIANA
INDIANAPOLIS DIVISION
COOK INCORPORATED Corporate Parent
COOK GROUP INCORPORATED,
Plaintiff,
v.
ENDOLOGIX, INC.,
Defendant.
______________________________________
ENDOLOGIX, INC.,
Counter Claimant,
v.
COOK INCORPORATED,
Counter Defendants.

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Case No. 1:09-cv-01248-TWP-DKL

ENTRY ON ENDOLOGIX’S MOTION FOR LEAVE TO FILE SUMMARY
JUDGMENT OF NO CONTRACTUAL ESTOPPEL AND NO WILLFUL
INFRINGEMENT
This matter is before the Court on Defendant Endologix, Inc.’s (“Endologix”) motion for
leave to file a motion for summary judgment of no contractural estoppel and no willful
infringement (Dkt. 264). The deadline for filing dispositive motions in this case was March 30,
2012 and this matter is set for trial by jury beginning October 29, 2012. Endologix contends the
Court should grant its motion “because the underlying motions are based on two recent legal
decisions that were not available to Endologix before the substantive motion cut-off date.” Dkt.
264 at 1. Endologix is referring to this Court’s July 6, 2012 Entry denying Endologix’s Motion

for Summary Judgment that Plaintiff Cook Incorporated’s (“Cook”) Patent Infringement Claims
are Barred by Contractual Estoppel (Dkt. 225) and the Federal Circuit’s June 14, 2012 decision
Bard Peripheral Vascular, Inc. v. W.L. Gore & Associates, Inc., 682 F.3d 1003 (Fed. Cir. 2012).
For the reasons set forth below, Endologix’s motion (Dkt. 264) is DENIED.
To begin, the Court notes that the dispositive motion deadline in this case was March 30,
2012; the current motion was not filed until August 13, 2012, well past the deadline. Endologix
states that it has “moved promptly to raise these legal issues with the Court” and resolution of the
issues “prior to trial will simplify the issues for the Court and jury, reduce the risk of juror
confusion, and conserve judicial and party resources.” Dkt. 264 at 2. The Court disagrees.
Endologix’s proposed underlying motion for summary judgment encompasses two issues,
each of which it claims should be resolved before trial. First, Endologix argues the Court’s
denial of summary judgment of contractual estoppel (Dkt. 225) is not a “final judgment on the
contractual estoppel issue and, therefore, the issue currently remains unresolved.” Dkt. 264 at 3.
It is undisputed that the Court’s July 6, 2012 entry definitively concluded Endologix’s
contractual estoppel defense fails as a matter of law. Moreover, both parties agree there are no
factual disputes regarding this issue. Because the Court has found as a matter of law that the
2008 Settlement Agreement does not bar Cook’s current patent infringement claims, no issues of
fact remain.
Endologix argues that a final judgment in the form of granting its underlying proposed
summary judgment motion will preserve the issue for appeal to the Federal Circuit. But this is
not the sole method to preserve this issue for appeal. The Seventh Circuit has held that to appeal
the denial of summary judgment where the evidence was disputed, “a challenge must be raised in
a Rule 50(a) motion for judgment as a matter of law before the case is submitted to the jury.”

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Chemetall GMBH v. ZR Energy, Inc., 320 F.3d 714, 718 (7th Cir. 2003). However, when a
denial of summary judgment is purely a legal issue, as it was here, “[t]he general rule . . . that,
after a trial on the merits, the court of appeals will not review the district court’s earlier denial of
a motion for summary judgment” does not apply. Id. “Defenses are not extinguished merely
because presented and denied at the summary judgment state. If the plaintiff goes on to win, the
defendant can reassert the defense on appeal.” Id. (quoting Rekhi v. Wildwood Indus., Inc., 61
F.3d 1313, 1318 (7th Cir. 1995)). In this case, Endologix need not present its contractual
estoppel defense to the jury merely to preserve it for appeal. Therefore, the Court need not again
address the issue of collateral estoppel before trial.
Second, Endologix argues that the Bard decision requires the Court to decide the first
prong of the willful infringement test, that is, whether a reasonable person would have
considered there to be a high likelihood of infringement of a valid patent. See Bard, 682 F.3d at
1008. This issue is not in dispute. The Court agrees, as does Plaintiff Cook, that Bard clarified
the allocation of decision making under the two-prong willful infringement test. However, the
Court does not believe this issue must be decided before trial. As pointed out by Cook in its
opposition to the instant motion, “Bard contemplates a decision on the objective prong after the
jury has deliberated on other aspects of willfulness.” Dkt. 272 at 4. Bard instructs that the court
may, “when the defense is a question of fact or a mixed question of law and fact[,] allow the jury
to determine the underlying facts relevant to the defense in the first instance.” Bard, 682 F.3d at
1008. In fact, in Bard the court remanded for the lower court to determine “based on the record
ultimately made in the infringement proceedings, whether a reasonable litigant could realistically
expect [its] defenses to succeed.” Id. The Bard court cited for this proposition DePuy Spine Inc.
v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1324 (Fed. Cir. 2009), in which the court held

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an underlying question of law for the judge may be determined either by a motion for partial
summary judgment or “on a motion for judgment as a matter of law at the close of evidence and
after the jury verdict.” Therefore, the Court need not decide this issue before trial.
CONCLUSION
For the reasons stated above, Endologix’s Motion for Leave to File Motion For Summary
Judgment of No Contractual Estoppel and No Willful Infringement (Dkt. 264) is DENIED.

SO ORDERED.
08/30/2012
Date: _____________

________________________
Hon. Tanya Walton Pratt, Judge
United States District Court
Southern District of Indiana

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DISTRIBUTION:
Bradley G. Lane
BRINKS HOFER GILSON & LIONE
[e-mail]

Andrew W. Hull
HOOVER HULL LLP
[e-mail]

Bryan John Leitenberger
BRINKS HOFER GILSON & LIONE
[e-mail]

Daniel K. Burke
HOOVER HULL LLP
[e-mail]

Danielle Anne Phillip
BRINKS HOFER GILSON & LIONE
[e-mail]

Joseph S. Cianfrani
KNOBBE MARTENS OLSON & BEAR,
LLP
[e-mail]

Jason W. Schigelone
BRINKS HOFER GILSON & LIONE
[e-mail]

John David Evered
KNOBBE MARTENS OLSON & BEAR,
LLP.
[e-mail]

Kelly J. Eberspecher
BRINKS HOFER GILSON & LIONE
[e-mail]

Joshua J. Stowell
KNOBBE MARTENS OLSON & BEAR,
LLP.
[e-mail]

Ralph J. Gabric
BRINKS HOFER GILSON & LIONE
[e-mail]

John B. Sganga, Jr.
KNOBBE MARTENS OLSON & BEAR,
LLP.
[e-mail]

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