BOSTON SCIENTIFIC CORPORATION ET AL V. COOK GROUP INCORPORATED ET AL
Filing
1076
ORDER granting 995 Motion; granting 1013 Motion; denying 1031 Motion for Leave to File; granting 1033 Motion. See Order. Signed by Judge James R. Sweeney II on 05/22/2023. (SNB)
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UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF INDIANA
INDIANAPOLIS DIVISION
BOSTON SCIENTIFIC CORPORATION a
Delaware Corporation,
BOSTON SCIENTIFIC SCIMED, INC. a
Minnesota Corporation,
Plaintiffs,
v.
COOK MEDICAL LLC an Indiana Limited
Liability Company,
Defendant.
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No. 1:17-cv-03448-JRS-MJD
Order on Various Motions
This is a patent infringement case.
Before the Court are several motions.
Defendant, Cook Medical LLC, filed a Motion to Narrow Disputes for Trial, (ECF No.
1013), a Motion for Leave to File a Response to Plaintiffs' Trial Brief, (ECF No. 1031),
and a Motion to Preclude Boston Scientific from Making Arguments That Are
Inconsistent with the Court's Summary Judgment Ruling ("Motion to Preclude
Inconsistent Arguments"), (ECF No. 1033). Plaintiffs, Boston Scientific Corporation
and Boston Scientific SciMed, Inc., filed a Motion to Permit Remote Testimony of
Maher, (ECF No. 995), and a Motion to Strike Barry Slowey from Cook's Witness List,
(ECF No. 1020). The Court addresses these motions in turn.
I.
Motions to Narrow Disputes and Preclude Inconsistent Arguments
In its Motion to Narrow Disputes, Defendant asks the Court to rule on the
following three issues: (1) whether Plaintiffs should be allowed to present "dicta" from
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the claim construction order to the jury relating to the doctrine of equivalents; (2)
whether Plaintiffs may introduce deposition testimony for a witness that is also
testifying live at trial; and (3) whether Defendant should be allowed to introduce
statements about the history of the case. The Court addresses each issue in turn.
The Motion to Preclude Inconsistent Arguments overlaps with the first issue in the
Motion to Narrow Disputes and will therefore be addressed in that section.
A. The Doctrine of Equivalents
The parties disagree on how to proceed in trial as to infringement of the '048
patent under the doctrine of equivalents. Before resolving these issues, the Court will
first clarify the doctrine as it applies to the case.
On December 22, 2016, the District of Delaware (from where this case was
transferred) construed the term "sheath" of claim 1 of the '048 patent to mean "one
or more components of the delivery device that enclose the control wire." (ECF No.
80 at 35.) In doing so, the court rejected (1) Plaintiffs' proposed construction that the
sheath only means "one or more components that enclose the control wire" and (2)
Defendant's proposed construction that would require a sheath component to
"separate from the clip upon release of the control wire." (Id. at 31.) The court was
"not persuaded that the patents require the limitation that no part of the sheath may
ever remain with the clip at the target site" but made clear that the sheath must still
be a component of the "delivery device." (Id. at 34.) Thus, based on the construction,
for something to be considered a component of the "sheath," it need only meet two
requirements: (1) it must be a component of the delivery device and (2) it must enclose
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the control wire. Whether a component is removed from the body or stays behind in
the body is therefore completely irrelevant for the purposes of determining whether it
is part of the sheath (or an equivalent).
On January 31, 2023, this Court issued its ruling on summary judgment. At issue
was whether the Accused Products infringed claim 1 of the '048 patent requiring link
arms that move "radially outward at an area of the sheath." Plaintiffs had asserted
that (1) the housing of the Accused Products is part of the sheath and (2) the link
arms of the Accused Products move radially outward at an area of the housing, thus
satisfying the limitation of claim 1. Defendant did not dispute that the link arms
move radially outward at an area of the housing; instead, it argued that the housing
is not a sheath component. While both parties agreed that the Accused Products'
housing "enclose[s] the control wire," the Court found that the Accused Products did
not literally infringe claim 1 of the '048 patent because the housing is not a component
of the delivery device as required by the claim construction of "sheath." (See ECF No.
962 at 28–30 ("The housing is not a part of the sheath not because it remains in the
body, but rather, because Plaintiffs have not presented evidence that it is a
component of the delivery device, as is required by this Court's construction of
'sheath.'").)
However, the Court found that a genuine dispute existed as to
infringement under the doctrine of equivalents; this is the only remaining
infringement issue for trial. (Id. at 31.)
Under the doctrine of equivalents, "[i]f an asserted claim does not literally read on
an accused product, infringement may still occur . . . if there is not a substantial
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difference between the limitations of the claim and the accused product." Bayer AG
v. Elan Pharm. Rsch. Corp., 212 F.3d 1241, 1247 (Fed. Cir. 2000). One way to
determine equivalence is through the function-way-result test, wherein the plaintiff
would have to show that the allegedly equivalent element in the accused device "'does
substantially the same thing in substantially the same way to get substantially the
same result' as the claim limitation." Toro Co. v. White Consol. Indus., Inc., 266 F.3d
1367, 1370 (Fed. Cir. 2001) (citation omitted).
In this case, because the Court found that the Accused Products do not literally
infringe the limitation requiring link arms that "move radially outward at an area of
the sheath," Plaintiffs at trial must show that the housing of the Accused Products is
insubstantially different from the claimed "sheath" in order to prove infringement
under the doctrine of equivalents. Plaintiffs ' equivalents theory was discussed at
length in the Court's Order on Summary Judgment. (See ECF No. 962 at 31–32.)
Defendant argues that Plaintiffs "steered the Court down the wrong path in
arguing that the housing is equivalent to the sheath" because there is no dispute that
the Accused Products have a "sheath." Not so. The Court is aware that the general
"sheath" limitation is itself not in dispute and that the Accused Products have other
components (e.g., coil cath, coil spring, and cath attach) which are part of the sheath.
But according to Defendant's own argument, the reason the "link arms moving
radially outward at an area of the sheath" limitation is not met is only because the
housing is not the sheath. Importantly, "sheath" is itself a separate claimed element
of the invention that, by both parties' proposed constructions, can include multiple
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components. (See ECF No. 80 at 31 (showing both parties' constructions of "sheath"
to include "one or more components").) Thus, the housing may be equivalent to (i.e.,
substantially the same as) another sheath component, even if it is not literally part
of the sheath. If so, then the limitation requiring link arms that move radially
outward at an area of the sheath can be met. See Abraxis Bioscience, Inc. v. Mayne
Pharma (USA) Inc., 467 F.3d 1370, 1380 (Fed. Cir. 2006) (cleaned up) ("What
constitutes equivalency must be determined against the context of the patent, the
prior art, and the particular circumstances of the case. . . . [E]quivalence, in the patent
law, is not the prisoner of a formula and is not an absolute to be considered in a
vacuum.").
Defendant further insists that proceeding under Plaintiffs' theory constitutes
"reversible error." (See ECF No. 1062 at 2 (arguing instead that "the issue to be
decided by the jury will be whether link arms that move radially outward outside of
the sheath (e.g., inside the housing of the Accused Products) are equivalent to the
claimed link arms that move radially outward within the sheath"). But the question
here is "what 'equivalent' is being identified in the Accused Products?" For the "link
arms moving radially outward at an area of the sheath" limitation, Plaintiffs' alleged
equivalent is the housing as an equivalent to the sheath, not the link arms. To be
sure, Plaintiffs could have conceded that the housing of the Accused Products is
neither sheath, nor a sheath equivalent, and instead argued that the Accused
Products' link arms are equivalent to the claimed link arms, differing from one
another only in the location in which they move (in sheath vs. not in sheath). In that
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scenario, Defendant's proposed doctrine of equivalents theory (i.e., determining the
difference in function between the claimed link arms and the Accused Product link
arms) would be the correct path forward. But that is not Plaintiffs' theory. Instead,
Plaintiffs assert that the housing is, at the least, an equivalent of a sheath component
(another claimed element in the invention). Thus, the equivalent in the Accused
Products at issue for trial is not the link arms, as Defendant proposes, but the
housing. In sum, to find infringement under the doctrine of equivalents, the jury
must decide whether the housing is an equivalent of (i.e., substantially the same as)
the sheath. This analysis is consistent with the meaning of the claimed elements.
See Warner-Jenkinson Co. v. Hilton Davis Chem. Co., Inc., 520 U.S. 17, 41 (1997)
(noting that the analysis requires "preservation of some meaning for each element in
a claim").
Each party is concerned that the other side will argue its position as to
infringement under the doctrine of equivalents in a manner inconsistent with the law
and with this Court's orders. The parties' concerns are with (1) arguments relying on
claim construction "dicta" to prove the housing is (or is not) a "sheath" equivalent and
(2) arguments related to the function of the sheath.
1. Claim Construction "Dicta"
Defendant wishes to preclude Plaintiffs from presenting claim construction "dicta"
to the jury to show that a part of the sheath can remain in the body after delivery.
(ECF No. 1015 at 6.) In response, Plaintiffs argue that they only seek to present this
rationale because Defendant's noninfringement arguments contradict the Court's
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claim construction. (ECF No. 1018 at 6.) For the following reasons, the Court
precludes Plaintiffs from presenting "dicta" from the claim construction order to the
jury; however, Defendant is likewise precluded from arguing, explicitly or implicitly,
that the housing of the Instinct and Instinct Plus cannot be an equivalent of a sheath
component simply because it remains behind in the body.
As discussed above, the Court has construed "sheath" to mean "one or more
components of the delivery device that enclose the control wire"; whether a component
remains inside or outside the body therefore has no impact on whether that
component is part of the sheath, 1 and the jury should only be presented with the final
construction adopted by the Court. (ECF No. 80 at 35; see Sunny Fresh Foods, Inc. v.
Michael Foods, Inc. 130 F. App'x 459, 464–65 (Fed. Cir. 2005) ("Michael Foods's
complaint is that the district court provided the jury with merely the disputed claims
and their respective definitions but excluded the dicta in the district court's claim
construction order setting forth the reasoning accompanying the actual definitions.
This court finds no error in this practice.").) At trial, the jury must determine whether
Defendant's assertion that the Court "arrived at its conclusion" regarding infringement by
relying on evidence that the housing "remains behind in the body" is misleading. (ECF No.
1023 at 12.) The reasoning from the Court's Order on Summary Judgment that Defendant
cites arises in the context of Dr. Nicosia's testimony on what is meant by a delivery device.
(See ECF No. 30.) There, Plaintiffs had attempted to create a genuine dispute of fact by
pointing to Nicosia's "admission" that any component involved in the delivery of the clip was
part of the delivery device. Rejecting this argument, the Court emphasized that Nicosia had
actually defined a delivery device component as one involved in delivering the payload.
Relying on Nicosia's definition, the Court concluded that his testimony did not create a
dispute of fact because the housing, as part of the payload, is not involved in the delivery of
itself. (Id.) A component of the delivery device can remain at a target site; an opposite
conclusion would run counter to the construction of "sheath." The Court arrived at its
conclusion on summary judgment because Plaintiffs had failed to designate evidence
distinguishing the clip of the Accused Products from the delivery device (and consequently
failed to show that the housing was a component of said delivery device).
1
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the housing is substantially the same as the sheath. All the parties have to do is (1)
explain the function of the sheath components and (2) show whether the housing
functions in substantially the same way (or not).
Defendant is precluded from
arguing that the housing cannot be an equivalent because it remains in the body2
2. The Function of the Sheath
Based on Plaintiffs' Pre-Trial Brief, Defendant is concerned Plaintiffs will argue
that the sheath only has a single function: to enclose the control wire. (See ECF No.
1007 at 9.) Defendant contends Plaintiffs are judicially estopped from making such
an argument based on the Court's summary judgment and claim construction orders.
The Court agrees.
Judicial estoppel "generally prevents a party from prevailing in one phase of a
case on an argument and then relying on a contradictory argument to prevail in
another phase." New Hampshire v. Maine, 532 U.S. 742, 749 (2001) (cleaned up).
"Judicial estoppel is a doctrine intended to prevent the perversion of the judicial
process."
In re Cassidy, 892 F.2d 637, 641 (7th Cir. 1990) (citation omitted).
"Estoppel is an equitable concept, and its application is therefore within the court's
sound discretion." Id. at 642.
Defendant may also not circumvent this Order by arguing that the housing functions
substantially differently than the claimed sheath because the claimed sheath is required to
leave the body; this impermissibly contradicts the Court's construction as well. Plaintiffs
may, however, argue that a housing which is not a component of the delivery device is
substantially different than the claimed sheath. (See ECF No. 1023 at 11 (explaining
Defendant's noninfringement position).) It will be Plaintiffs' burden to explain why the
housing's function is substantially the same as the remaining sheath components, even
though it is not part of the delivery device.
2
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At the outset, the Court does not find that a "single-function" equivalents theory
contradicts the claim construction of "sheath" simply because the construction
requires the sheath to be a part of the "delivery device." Construing a claim term
does not necessarily define its function for purposes of the doctrine of equivalents,
and Defendant's own expert agreed with this assertion.3 (See ECF No. 621-17 at 25
(arguing the sheath has only one function despite knowledge of the Court's claim
construction).) Defendant has not pointed to any law to the contrary.
However, judicial estoppel must still apply due to the Court's ruling at the
summary judgment stage. There, in finding a genuine dispute of fact as to whether
the housing was an equivalent to a sheath component, the Court relied on Plaintiffs'
expert report discussing the several functions of the sheath. Plaintiffs' expert, Mr.
Leinsing, opined that the sheath has the following three functions: (1) acting as a
housing for the control wire, (2) acting as a means for rotating the clip, and (3) acting
as a component of the clip release mechanism. (ECF No. 621-4 at 74 (emphasis
added).) The Court relied on Leinsing's report in finding a genuine dispute of fact on
whether the housing was indeed an equivalent of the sheath; it therefore did not find
summary judgment in favor of Defendant.
Plaintiffs now attempt to rewrite
Leinsing's report. This is not permissible. Plaintiffs argue that Leinsing merely
The "delivery device" language from the claim construction comes into play when
Defendant's expert, Nicosia, opines why the function of enclosing the control wire via a
delivery device component is performed in a substantially different "way" compared to
enclosing the control wire with a component that is not a part of the delivery device. (ECF
No. 621-17 at 25.) Thus, according to Nicosia, the "delivery device" language in the
construction is pertinent to the location of the sheath component and the way it accomplishes
its single function, rather than indicating a wholly separate function of the sheath.
3
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opined on three potential functions of the sheath in the patent generally, not on the
functions of the "claimed sheath" of claims 7 and 14. (ECF No. 1060 at 4–5.) But
within the section pertaining to infringement under the doctrine of equivalents of
claim 1 (from which claims 7 and 14 depend), Leinsing states, "The claimed sheath
performs the functions of acting as a housing for the control wire, acting as a means
by which the clip can be rotated, and acting as a component of the mechanism by
which the clip is released." (ECF No. 621-4 at 74 (emphasis added).) He then
continues to explain how the housing (along with the other sheath components)
performs these three functions in substantially the same way. The Court did not
misinterpret Leinsing's report.
Plaintiffs' reliance on Defendant's expert does not save the day. Specifically,
Plaintiffs point to Dr. Nicosia's rebuttal report wherein he stated, "Claim 1 describes
just one function of the claimed 'sheath' – 'enclosing the control wire.' To the extent
Mr. Leinsing contends that Cook’s Accused Products perform any additional
functions, those functions are not relevant to claim 1 because they are unclaimed
functions." (ECF No. 621-17 at 25.) Thus, Plaintiffs argue their "single-function"
theory is supported by the record. However, the question that must be answered
today is whether the Court would have still found a genuine dispute of fact as to
infringement of claims 7 and 14 under the doctrine of equivalents had Plaintiffs
argued a "single-function" theory at that stage. The answer is .no. Nothing in the
record would have supported that argument, including and especially Nicosia's
report. Nicosia's report specifically opines that the housing is not an equivalent to
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the sheath because it functions substantially differently from the claimed sheath.
The only doctrine of equivalents analysis in the record identifying the housing as a
sheath equivalent was Leinsing's report discussing the three functions of the sheath.
Accordingly, Plaintiffs are judicially estopped from arguing a "single-function"
theory for the claimed sheath.
B. Deposition Testimony of a Live Witness
At trial, Plaintiffs intend to present the deposition testimony of Michelle Martinez
Smith, Defendant's Fed. R. Civ. P. 30(b)(6)-designated witness who will also be
testifying live.
Defendant objects to the deposition testimony as inefficient,
confusing, and potentially cumulative.
"[T]he decision to admit deposition testimony is within the sound discretion of the
district court." Oostendorp v. Khanna, 937 F.2d 1177, 1179 (7th Cir. 1991). Under
Fed. R. Civ. P. 32(a)(3), "[a]n adverse party may use for any purpose the deposition
of a party or anyone who, when deposed, was the party's officer, director, managing
agent, or designee under Rule 30(b)(6)." "The pre-trial deposition of a party is in a
position different from that of an ordinary witness, and may be introduced as a part
of the adversary's substantive proof irrespective of the fact that the party is available
to testify or has testified at the trial." Fey v. Walston & Co., 493 F.2d 1036, 1046 (7th
Cir. 1974) (emphasis added) (citation omitted); see also 8A Fed. Prac. & Proc. Civ.
(Wright & Miller) § 2145 (3d. ed.) (A court "may not refuse to allow the deposition to
be used merely because the party is available to testify in person."); Estate of
Thompson v. Kawasaki Heavy Indus., Ltd., 291 F.R.D. 297, 305 (N.D. Iowa 2013)
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(discussing divided law and the purpose of Rule 32(a)(3)). However, the Court is
within its discretion to expedite trial and exclude repetitious or immaterial matter.
Fey, 493 F.2d at 1046. While there is typically a preference for live testimony, district
courts have come to different conclusions when deciding whether to preclude
deposition testimony under Rule 32(a)(3). Compare, e.g., Berry Plastics Corp. v.
Intertape Polymer Corp., 3:10-cv-00076-RLY-WGH, 2015 WL 7960986, at *2 (S.D.
Ind. Dec. 4, 2015) (precluding party from presenting deposition testimony of 30(b)(6)
witness that will testify live) with Parr v. Sunbeam Prods., Inc., No. 06–1208, 2009
WL 10682255, at *3 (C.D. Ill. Oct. 5, 2009) (acknowledging preference for live
testimony and use of deposition testimony only for impeachment, but nonetheless
permitting deposition testimony of live witness under Rule 32(a)(3)).
At this stage, the Court is not persuaded that Plaintiffs should be precluded from
using Ms. Smith's deposition testimony. Ms. Smith is Plaintiffs' adverse witness and
is Defendant's 30(b)(6) designee on a number of topics; her testimony thus falls
squarely within Rule 32(a)(3). Additionally, rather than an open-ended trial, both
sides have been given twenty hours to present their case. If Plaintiffs wish to use up
some of their time with Ms. Smith's deposition testimony, then they may do so; the
Court's preclusion will not expedite a trial where both sides appear keen on using
every second of their allotted time and where, to be sure, the Court will not allow one
second more. Further, Defendant has counter designations in Ms. Smith's testimony
that it may use when appropriate. Defendant has also not provided any basis for its
conclusory assertion that the testimony might "harass or embarrass Ms. Smith."
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(ECF No. 1023 at 14.) To the extent Plaintiffs elicit live testimony that is cumulative
of deposition testimony, Defendant may object at trial.
As to Defendant's request to have Plaintiffs identify which portions of the
deposition testimony they plan to use, (ECF No. 1023 at 13), the Court sees no dispute
needing resolution.
Plaintiffs have designated specific portions of Ms. Smith's
deposition testimony. (See ECF No. 998-1 at 11 –17.) Defendant has designated its
counter designations, and a higher level of specificity from Plaintiffs is not required.
For these reasons, the Court will not categorically and preliminarily preclude
Plaintiffs from using Ms. Smith's deposition testimony even though she will testify
live at trial.
C. Evidence of the "History of the Case"
Defendant seeks to introduce evidence of the "history of the case," namely, a
summary of the patents and claims that have been asserted against the Accused
Products since the start of litigation, and the ultimate resolution of those asserted
claims.
Plaintiffs seek a ruling on whether the following "neutral and non-
argumentative facts" are admissible to the jury:
1. Over the course of this case, Plaintiffs have accused Cook’s Instinct
products of infringing four patents: (1) U.S. Patent No. 8,709,027
(“the ’027 patent”); (2) U.S. Patent No. 8,974,371 “the ’371 patent;”
(3) the ’048 patent; and (4) the ’731 patent.
2. Plaintiffs asserted 17 claims of the ’027 patent against Cook.
a. All of the asserted claims of the ʼ027 patent were found to be
invalid.
b. As a result, the ’027 patent is no longer at issue in this case.
3. Plaintiffs asserted 9 claims of the ’371 patent against Cook.
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a. Eight of the asserted claims of the ’371 patent were found to
be invalid.
b. The other asserted claim of the ʼ371 patent was found not
infringed by Cook.
c. As a result, the ’371 patent is no longer at issue in this case.
4. Plaintiffs asserted 5 claims of the ʼ048 patent against Cook.
a. One of the asserted claims of the ʼ048 patent was found to be
invalid.
b. Another two of the asserted claims of the ʼ048 patent were
found not infringed by Cook.
c. The remaining two asserted claims of the ‘048 patent (asserted
claims 7 and 14) were found not literally infringed by Cook.
d. Cook maintains that it does not infringe claims 7 and 14 under
the doctrine of equivalents, and that each of these claims is
also invalid.
5. Plaintiffs asserted 15 claims of the ’731 patent against Cook.
a. Thirteen of the asserted claims of the ʼ731 patent were found
to be invalid.
b. The remaining two claims of the ʼ731 patent (asserted claims
5 and 19) were found to be infringed by Cook.
c. Cook maintains that claims 5 and 19 of the ’731 patent are
invalid.
6. Plaintiffs’ Resolution series of clips does not use claims 7 or 14 of the
ʼ048 patent or claims 5 and 19 of the ’731 patent.
7. Plaintiffs have not sold or offered to sell any product that uses claims
7 or 14 of the ʼ048 patent or claims 5 or 19 of the ʼ731 patent.
(ECF No. 1015 at 19–20.) Plaintiffs object to these facts as irrelevant, prejudicial,
and misleading.
On February 2, 2023, the Court granted-in-part and denied-in-part Plaintiffs'
Motion in Limine No. 1 seeking exclusion of evidence related to the IPR proceedings.
(ECF No. 982 at 1–2.) The Court held that Defendant could rely on evidence from the
IPR proceedings (1) for impeachment purposes and (2) to rebut willful infringement.
(Id.) The Court further specified that if Defendant plans to use IPR evidence, it will
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do so only "generally" without reference to the PTAB's findings and conclusions. (Id.)
Defendant seeks clarification of whether the facts above are within the Court's
guidelines.
The Court can quickly exclude all facts related to the '027 and '371 patents, as
well as unasserted claims of the '048 patent, which are longer part of this case. The
'027 patent, '371 patent, and the unasserted claims in the '048 patent have no bearing
whatsoever on whether Defendant willfully infringed the remaining asserted claims
in the '048 or '731 patents. See, e.g., TecSec, Inc. v. Adobe Inc., No. 1:10-cv-115, 2018
WL 11388472, at *6 (E.D. Va. Nov. 21, 2018) (excluding dropped and dismissed patent
claims as "irrelevant to Adobe's culpability at the time of the challenged conduct");
Digit. Reg of Tex., LLC v. Adobe Sys., Inc., No. C 12–1971 CW, 2014 WL 4090550, at
*10 (N.D. Cal. Aug. 19, 2014) (excluding evidence of dropped claims as "not probative
of Adobe's state of mind with respect to its alleged willful of indirect infringement of
the separate claims that remain"). Thus, facts 2, 3, 4(a), and 4(b) are inadmissible.
Unlike the '027, '371, and '048 patents, the history of the '731 patent presents a
unique story that may in fact be pertinent to willful infringement. At the outset of
this litigation, Plaintiffs had asserted claims 1-4, 6-10, 12-14, and 20 of the '731
patent against the Instinct clip. (ECF No. 82 at 10.)
All of those claims were
invalidated at the IPR, and the Federal Circuit affirmed their invalidity in 2020. See
Boston Sci. Scimed, Inc. v. Cook Grp. Inc., 809 F. App’x 984, 987 (Fed. Cir. 2020). As
a result, Plaintiffs stipulated to dismissal of the '731 patent from the case. (ECF No.
385.) In early 2021, Defendant launched the Instinct Plus clip; thereafter, Plaintiffs
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reasserted the '731 patent, this time relying on claims 5 and 19 (which were found
not invalid at the IPR, and which had not been asserted before in the litigation).
Therefore, Defendant argues that the history of the case as to the '731 patent is
pertinent to rebut Plaintiffs' claim that Defendant willfully infringed the '731 patent
by launching a new infringing product, the Instinct Plus. (See ECF No. 1023 at 15–
16.) Specifically, the evidence is relevant to Defendant's state of mind at the time it
launched the Instinct Plus, when at that point, it had invalidated all previously
asserted claims of the '731 patent. See Halo Elecs., Inc. v. Pulse Elecs., Inc., 579 U.S.
93, 105 (2016) (discussing willful infringement and noting that "culpability is
generally measured against the knowledge of the actor at the time of the challenged
conduct"). The Court accepts Defendant's assertion that the history of the '731 patent
is probative of willfulness on the '731 claims and finds fact 5 admissible to that extent.
Defendant may explain the case history of the now-invalid and unasserted claims of
the '731 patent to rebut a charge that it willfully infringed that patent when it
launched the Instinct Plus.4 If Defendant seeks to rely on evidence of the IPR
proceedings for any other purpose, it may do so generally (e.g., to suggest that it tried
to invalidate the presently-asserted claims against it); it may not introduce any
conclusions from the IPRs as to specific claims aside from those of the '731 patent
discussed herein. However, if Defendant goes this route, the door will be opened for
Plaintiffs to show the results of the IPR proceedings as to the presently asserted
Defendant may still not refer to the legal analysis or findings made at the IPR apart from
the ultimate conclusions that the asserted '731 claims at the time were found invalid.
4
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claims (i.e., that they were found not invalid). (See ECF No. 1007 at 32.) Also, the
parties should remain mindful that the clock will be running.
At this time, the Court will not rule on whether facts 6 and 7 are admissible.
Defendant did not discuss why these facts are relevant, and Plaintiffs did not discuss
why they are inadmissible. The parties should be prepared to discuss their positions
on the admissibility of these facts at the pretrial conference scheduled for May 25,
2023.
II.
Motion for Leave to File a Response to Plaintiffs' Trial Brief
Defendant seeks leave to file a response to Plaintiffs' Trial Brief. (ECF No. 1031.)
That motion is denied. A trial brief is not the proper method to seek relief from the
Court; if Plaintiffs still seek relief (that is not addressed by this Order), they must
timely file a proper motion.
The Court will, however, clarify one point of contention: collateral estoppel is no
longer at issue in this case. Defendant is under the impression that the Court left an
open question of fact for trial as to collateral estoppel. (See ECF No. 1031-1 at 9–10.)
Not so. At the summary judgment stage, the Court held that collateral estoppel was
not applicable to this case, and therefore, did not preclude Plaintiffs from disputing
any arguments presented at trial that claims 5 and 19 of the '731 patent are invalid.
(ECF No. 962 at 97–100.) Defendant now suggests that, while Plaintiffs can so
dispute invalidity, they are still collaterally estopped from "asserting infringement"
under those claims of the '731 patent. (ECF No. 1031-1 at 9.) But, for substantially
the same reasons that Plaintiffs can dispute invalidity, they are not collaterally
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estopped from asserting infringement. Indeed, the Court has already found that
claims 5 and 19 of the '731 patent are infringed, subject to a finding of invalidity by
the jury. Simply put, collateral estoppel does not apply in this case (whether to
dispute invalidity or to assert infringement) because claims 5 and 19 of the '731
patent were adjudicated in the prior IPR. See Ohio Willow Wood Co. v. Alps. South,
LLC, 735 F.3d 1333, 1342 (Fed. Cir. 2013) (emphasis added) ("If the differences
between the unadjudicated patent claims and adjudicated patent claims do not
materially alter the question of invalidity, collateral estoppel applies."); cf. Kroy IP
Holdings, LLC v. Groupon, Inc., No. 17-1405, 2022 WL 17403538, at *4–7 (D. Del.
Dec. 2, 2022) (applying collateral estoppel to unadjudicated, "newly asserted" claims
that were materially identical to previously adjudicated claims). Notwithstanding
the fact that Ohio Willow Wood is inapposite here, where claims 5 and 19 were in fact
adjudicated, if a party is estopped from disputing invalidity, then by consequence, it
is estopped from asserting infringement. After all, the controlling language from
Ohio Willow Wood shows that collateral estoppel in this context arises if the "question
of invalidity" is not materially altered, thus estopping a party from bringing a claim
of infringement on a materially identical claim. Either way, Defendant's arguments
regarding Plaintiffs' ability to assert the claims are not well taken. Lastly, as to the
Court's language cited by Defendant from the Court's Order on Summary Judgment
in support of a "dispute" remaining for trial, that language was from a footnote noting
in the alternative that a genuine dispute of fact would exist "[e]ven if collateral
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estoppel applied." (ECF No. 962 at 100 n.9.) But collateral estoppel does not apply
here, and it is not an issue remaining for trial.
III. Motion to Permit Remote Testimony of Maher
Plaintiffs filed a Motion to Permit the Remote Testimony of Lauren Maher. (ECF
No. 995.) Defendant does not oppose the remote testimony of Ms. Maher, who is on
maternity leave. The motion is granted to this extent. Fed. R. Civ. P. 43(a) ("[T]he
court may permit testimony in open court by contemporaneous transmission from a
different location," "[f]or good cause in compelling circumstances and with
appropriate safeguards.").
However, Defendant opposes Plaintiffs' listing of Jim Petrou as an "alternate"
witness in the event Ms. Maher is unable to testify due to an emergency. Mr. Petrou,
a witness who has been deposed by the parties, was listed as an alternate to Ms.
Maher before the initially scheduled trial in February. Defendant did not object to
his listing as an alternate at that time. The Court continued the trial for good cause
presented by the Defendant, to which the Plaintiff agreed. Now, Defendant urges it
would be "prejudiced" if Mr. Petrou were allowed as an alternate witness, arguing
that Ms. Maher has given birth, and there is no longer an "emergency." (See ECF No.
1017.) That may be so, but Plaintiffs' concern for an alternate is still valid considering
Ms. Maher's maternity leave status and the extremely young age of her child. More
important, Defendant has failed to show what "prejudice" exists now that did not
exist in February. The parties have had ample time to prepare for the disclosed
witnesses, including Mr. Petrou, who may serve as an alternate witness. The Court
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may entertain any reasonable requests for time to prepare for that alternate
testimony.
IV. Motion to Strike Barry Slowey from Cook's Witness List
Plaintiffs filed a Motion to Strike Barry Slowey from Cook's Witness List. (ECF
No. 1020.) Despite Defendant timely and fully identifying Mr. Slowey in its Rule 26
disclosure, and there appearing to be no prejudice in allowing his testimony to
proceed subject to some limitations (e.g., limited to his 30(b)(6) designation topic and
subject matter covered in his 2017 deposition), this case was ready for trial without
any mention of Mr. Slowey as an additional witness before Defendant requested an
emergency continuance. The purpose of the continuance was not to allow for a change
in the trial as then set to proceed. In fact, after granting the continuance, the Court
issued an order, (ECF No. 992), for the purpose of narrowing issues in the case, not
for allowing an expansion of issues, in this instance the expansion of the witness list.
Further, Defendant has provided no reason why Mr. Slowey should be added at this
late date; i.e., after the trial was set to proceed and would have proceeded but for the
continuance granted at the eleventh hour. Still, the Court will withhold ruling on the
motion to strike pending brief arguments of the parties at the pretrial conference
scheduled for May 25, 2023.
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V.
Conclusion
Defendant's Motions to Narrow Disputes for Trial, (ECF No. 1013), and to
Preclude Inconsistent Arguments, (ECF No. 1033), are granted. The Court issues
the following rulings:
(1) Plaintiffs are precluded from presenting claim construction "dicta" to the
jury. Defendant is precluded from arguing, explicitly or implicitly, that the
housing of the Accused Products cannot be an equivalent of a sheath
component (or a delivery device) because it remains behind in the body.
(2) Plaintiffs are judicially estopped from presenting a "single-function" theory
as to the sheath.
(3) Plaintiffs are not precluded from using Ms. Smith's deposition testimony at
trial.
(4) Defendant is precluded from introducing evidence of the "history of the case"
as discussed in this Order. However, Defendant may explain the case history
of the now-invalid and unasserted claims of the '731 patent to rebut a charge
that it willfully infringed that patent when it launched the Instinct Plus. In
all other instances, Defendant may only refer to the IPRs generally, without
regard to their findings and conclusions; if Defendant does so, Plaintiffs may
present the results of the IPR proceedings as to the presently asserted claims.
Defendant's Motion for Leave to File a Response to Plaintiffs' Trial Brief, (ECF
No. 1031), is denied. Additionally, collateral estoppel is no longer at issue in this
case.
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Plaintiffs' Motion to Permit Remote Testimony of Maher, (ECF No. 995), is
granted. Mr. Petrou is permitted as an alternate witness.
The Court reserves ruling on Plaintiffs' Motion to Strike Barry Slowey from Cook's
Witness List, (ECF No. 1020), pending the arguments (or agreement of the parties)
during the May 25, 2023 pretrial conference.
SO ORDERED.
Date: 05/22/2023
Distribution to registered counsel by CM/ECF.
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