Smith & Nephew, Inc. v. Hologic, Inc.
Filing
94
Judge Rya W. Zobel: ORDER entered denying 40 Motion to Dismiss for Failure to State a Claim as moot; denying 6 Motion for Preliminary Injunction; denying 73 Motion for Partial Summary Judgment; denying 77 Motion for Summary Judgment; denying 82 Motion for Partial Summary Judgment (Urso, Lisa)
UNITED STATES DISTRICT COURT
DISTRICT OF MASSACHUSETTS
CIVIL ACTION NO. 10-10951-RWZ
SMITH & NEPHEW, INC.
v.
INTERLACE MEDICAL, INC.,
and HOLOGIC, INC.
*****
CIVIL ACTION NO. 11-12064-RWZ
SMITH & NEPHEW, INC.
v.
HOLOGIC, INC.
ORDER
June 5, 2012
ZOBEL, D.J.
These two patent cases have been consolidated for discovery and trial, but
because they were filed at different times, have heretofore proceeded on separate
schedules. Both patents describe a surgical endoscopic cutting device and, in one, the
method for its use. In each case the parties have filed motions consonant with the
progress and current status of that proceeding.
I. Civil Action 10-10951-RWZ
This case pertains to U.S. Patent 7,226,459, the ‘459 patent. Defendants
Interlace Medical, Inc., and Hologic, Inc., have moved to strike plaintiff Smith &
Nephew, Inc.’s, Amended Final Infringement Contentions (Docket # 65) and for
Summary Judgment of Non-Infringement and Invalidity (Docket # 86). Plaintiff moves
for Summary Judgment of Infringement and Partial Summary Judgment of Nonobviousness. (Docket # 105).
The court had earlier allowed a motion to strike the original infringement
contentions because they were based on the configurations of the accused device, not
on the claims of the patent as construed. (Docket # 63). The amended contentions are
based on the claims, although they do not appear to take account of the court’s claim
construction, most particularly with respect to the terms “drive member attached to the
cutting member” and “translation piece.” Proof of infringement must necessarily be
based on the claims as construed. However, because it is not certain at this stage that
plaintiff’s contentions are inconsistent with the court’s construction and that plaintiff will
be unable to meet its burden, the motion to strike is denied. This ruling does not
resolve the parties’ disagreement about the availability of the doctrine of equivalents
based on prosecution history estoppel which defendant may raise again during the trial.
Both motions for summary judgment are accompanied by statements of
undisputed facts, both of which elicited responses that contest the facts asserted by the
other, elaborate on details asserted, or describe the facts as irrelevant. Accordingly,
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the motions for summary judgment are denied.
II. Civil Action 11-12064-RWZ
This case, which claims infringement of U.S. Patent 8,061,359, the ‘359 patent,
was filed immediately after the issuance of the patent on November 22, 2011. Plaintiff
seeks a preliminary injunction against the alleged infringement by defendant (Docket #
6), and both parties seek the court’s construction of certain claim language in this
patent (Docket # 43).
The parties have also inundated the docket with dispositive motions. Plaintiff
moves to dismiss defendant’s inequitable conduct counterclaim and to strike
defendant’s affirmative defense (Docket # 40), and also moves for partial summary
judgment of no inequitable conduct, infringement as to certain claims, and validity
under 35 U.S.C. § 112. (Docket ## 73, 82). Defendant moves for summary judgment of
non-infringement as to all claims, and invalidity under 35 U.S.C. § 112 and/or § 103
(Docket # 77).
A. Injunctive Relief
Plaintiff premises the request for injunctive relief on the assertion that it has lost
substantial sales as a result of defendant’s conduct and that defendant’s continued
infringement of its patent will permanently deprive it of market share which cannot be
measured entirely in dollars. Despite the voluminous submissions, I am not persuaded
that plaintiff has shown irreparable harm, nor, given the parties’ hotly contested
positions on both infringement and validity, am I able to assess at this stage of the
litigation, the likelihood of plaintiff’s success on the merits. Accordingly, the motion for
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an injunction is denied.
B. Claim Construction
The parties disagree about the meaning of four claim terms in the ‘359 patent.
In resolving their differences, I will follow the legal principles articulated in the Markman
decision entered in the earlier case, where it appears as Docket # 47.
1. Term 1: “elongated member” (‘359 Patent, Claims 1-8)
Term
Court’s Construction
“elongated member”
“A component of the endoscope that
includes the first and second channels.”
The parties’ disagreement derives from their different views as to what particular
part of the endoscope the term refers. Defendant would equate it with outer tube 4 in
Figure 2, ‘359 Patent, Col. 3:62-63, and rigid housing, id., Col. 2: 57-58, which are
described as respectively being more than or at least 30 centimeters in length, and
which defendant says are the same thing. But the claim language is clear that the
elongated member is not equivalent to the outer tube or rigid housing; it rather relates
to two channels, one for viewing and the other for the introduction of fluids into the
uterus and for removal of the fluids and detritus after the surgery. The patent does not
define the length of the elongated member.
2. Terms 2 and 3: “aspirating cut tissue and fluid from the uterus and
the endoscope through the cutter” (‘359 Patent, Claims 1-4);
“aspirating fluid with detached tissue from the uterus through a
lumen of the cutter” (‘359 Patent, Claims 5-8)
Both of these terms have a plain and ordinary meaning. They require no
4
interpretation.
3. Term 4: “a cutting window at a distal region of the outer tube”
(‘359 Patent, Claims 2 and 6)
Term
Court’s Construction
“a cutting window at a distal region of the
outer tube”
“an opening at a distal region of the outer
tube to provide access to a cutting
component”
The court had construed the term “cutting window” in its earlier interpretation of
claim terms of the ‘459 patent. Because the term is used in the same manner in the
‘359 patent, it is appropriate to give it the same meaning.
C. Dispositive Motions
Plaintiff’s motion to dismiss (Docket # 40) was superceded by its motion for
summary judgment, and is therefore denied as moot. The parties’ summary judgment
motions (Docket ## 73 and 77) respectively rely on opinion testimony by experts which
the other side vigorously disputes, facts which are likewise hotly contested, or
assertions of knowledge, intent, or materiality which are inappropriate for summary
judgment. Their summary judgment motions are consequently denied. The court
anticipates no further dispositive motions by either party.
/s/Rya W. Zobel
RYA W. ZOBEL
UNITED STATES DISTRICT JUDGE
June 5, 2012
DATE
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