Searching over 5,500,000 cases.


searching
Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.

Skedco, Inc. v. Strategic Operations, Inc.

United States District Court, D. Oregon

February 12, 2018

SKEDO, INC., an Oregon corporation, Plaintiff,
v.
STRATEGIC OPERATIONS, INC., a California corporation, Defendant.

          Nathan C. Brunette Steven T. Lovett Elliott J. Williams, STOEL RIVES LLP., Brian C. Park, STOEL RIVES LLP., Attorneys for Plaintiff.

          Gary L. Eastman Kenny Nguyen EASTMAN & McCARTNEY LLP., Michael G. Neff, HAGLUND KELLEY LLP., Attorneys for Defendant.

          OPINION & ORDER

          MARCO A. HERNANDEZ UNITED STATES DISTRICT JUDGE.

         Plaintiff Skedco, Inc. brings this action against Defendant Strategic Operations, Inc., alleging that Defendant infringes Claims 18, 19, and 20 of United States Patent No. 8, 342, 652 ("the '852 Patent") which discloses a system for simulating hemorrhages in the training of first responders.[1] The United States, through the Secretary of the Army, owns the '852 Patent. Plaintiff is the sole and exclusive licensee of the '852 Patent under an agreement which also gives Plaintiff the right to bring this action in its own name.

         In 2015, after claim construction disputes were resolved, both parties moved for summary judgment on the issues of infringement, validity, and unenforceability based on inequitable conduct. In a December 8, 2015 Opinion, I granted summary judgment to Defendant on the issue of infringement, denied Plaintiff's motion on that issue, and denied all remaining motions as moot. Skedco, Inc. v. Strategic Ops., Inc., 154 F.Supp.3d 1099 (D. Or. 2015). Judgment was entered that day. ECF 153. Plaintiff appealed. In an April 24, 2017 Opinion, the Court of Appeals for the Federal Circuit (CAFC), reversed the summary judgment determination, concluding that I erred in construing certain claim elements. Skedco., Inc. v. Strategic Ops., Inc., 685 Fed.Appx. 956 (Fed. Cir. 2017). The CAFC vacated the underlying judgment and remanded the case to this Court. Id. The mandate was filed on May 31, 2017. ECF 197.

         The parties have now filed new summary judgment motions, again raising issues of infringement, validity, and unenforceability based on inequitable conduct. I grant Plaintiff's motion and deny Defendant's motion on the issue of literal infringement. I deny as moot both parties' motions on infringement under the doctrine of equivalents. I deny both parties' motions on obviousness and on inequitable conduct. I grant Plaintiff's motion addressed to all of Defendant's affirmative defenses except for obviousness and inequitable conduct.

         Following the recitation of summary judgment standards, this Opinion has four parts: (1) Infringement; (2) Obviousness; (3) Inequitable Conduct; and (4) Remaining Issues. My December 8, 2015 Opinion includes an overview of the '852 Patent, the then-operative claim constructions, and an overview of the allegedly infringing BPS System. 154 F.Supp.3d at 1101-03. I do not repeat the overviews here. I do not revisit the claim constructions other than those addressed by the CAFC in its April 24, 2017 Opinion.

         STANDARDS

         Summary judgment is appropriate if there is no genuine dispute as to any material fact and the moving party is entitled to judgment as a matter of law. Fed.R.Civ.P. 56(a). The moving party bears the initial responsibility of informing the court of the basis of its motion, and identifying those portions of "'the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, ' which it believes demonstrate the absence of a genuine issue of material fact." Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986) (quoting former Fed.R.Civ.P. 56(c)).

         Once the moving party meets its initial burden of demonstrating the absence of a genuine issue of material fact, the burden then shifts to the nonmoving party to present "specific facts" showing a "genuine issue for trial." Fed. Trade Comm'n v. Stefanchik, 559 F.3d 924, 927-28 (9th Cir. 2009) (internal quotation marks omitted). The nonmoving party must go beyond the pleadings and designate facts showing an issue for trial. Bias v. Moynihan, 508 F.3d 1212, 1218 (9th Cir. 2007) (citing Celotex, 477 U.S. at 324).

         The substantive law governing a claim determines whether a fact is material. Suever v. Connell, 579 F.3d 1047, 1056 (9th Cir. 2009). The court draws inferences from the facts in the light most favorable to the nonmoving party. Earl v. Nielsen Media Research, Inc., 658 F.3d 1108, 1112 (9th Cir. 2011).

         If the factual context makes the nonmoving party's claim as to the existence of a material issue of fact implausible, that party must come forward with more persuasive evidence to support his claim than would otherwise be necessary. Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587 (1986).

         INFRINGEMENT

         I. Prior Decision/Claim Construction & CAFC Opinion

         Most of the claim constructions from the 2014 Markman hearing and Markman Opinion which were controlling before the 2015 summary judgment motions, remain unchanged. Of the six terms or phrases this Court construed, the CAFC expressly rewrote only one. In the December 8, 2015 Opinion resolving the 2015 summary judgment motions, I added to the previous claim constructions. The CAFC concluded that my additional limitations were unsupported by the patent.

         Based on the prior claim constructions, particularly the construction of "valve, " "pump, " and "a controller connected to said pump and said at least one valve, " I granted Defendant's motion for summary judgment on literal infringement. 154 F.Supp.3d at 1104-1112. The CAFC's Opinion primarily concerned two claim elements in Claim 18: (1) "at least one valve in fluid communication with said pump, " and (2) "a controller connected to said pump and said at least one valve." Skedco, 685 Fed.Appx. at 957-58. As the CAFC noted, I construed "at least one valve in fluid communication with said pump" to require the pump and the valve to be physically separate structures. Id. at 959 (citing 154 F.Supp.3d at 1112). The CAFC did not disagree with the construction of "pump" as a "device that moves or transfers fluid by mechanical action, " or the construction of "valve" as "a device that regulates, directs, or adjusts the flow of fluid through a passageway by opening, closing, or restricting that passageway." Id. But, the CAFC rejected my conclusion that the pump and the valve had to be physically separate structures:

[N]othing in the claims requires the pump and the valve to be physically separated. The claimed valve need only be "in fluid communication with" the claimed pump. '852 patent, 14:9. Nothing prevents a pump from being "in fluid communication with" an internal valve.
* * *
Our construction is also consistent with the district court's construction of the individual terms "pump" and "valve." To paraphrase the district court, a "pump" moves fluid and a "valve" regulates fluid flow. See Skedco, 154 F.3d at 1102. . . . We see no reason why a device that moves fluid cannot contain another device that regulates flow within it. A pump does not cease moving fluid - i.e., being a "pump" - just because an internal valve adjusts fluid flow.
* * *
We therefore hold that the district court erred in construing the limitation "at least one valve in fluid communication with said pump" as requiring a physically separate pump and valve.

685 Fed.Appx. at 959, 960.

         The CAFC then addressed the limitation of "a controller connected to said pump and said at least one valve." Id. at 960-61. Following the Markman hearing, I construed the phrase "controller connected to" as "an activation mechanism joined, united, or linked to" establishing the meaning of the entire phrase as "an activation mechanism joined, united, or linked to said pump and said at least one valve." 154 F.Supp.3d at 1102. During my 2015 summary judgment infringement analysis, I further construed the phrase as requiring the controller to have "direct, " "independent, " and "physical" connections to the pump and the valve so that the pump and valve "were controlled by the controller." Id. at 1105-06. The CAFC concluded that including these additional limitations into Claim 18 was error.

         Instead of requiring a physical connection, the CAFC held that "the term 'connected to' in the context of the '852 patent contemplates both direct and indirect connections." 685 Fed.Appx. at 961. The CAFC further determined that there was no reason to "import" a "physical" limitation into Claim 18. Id. The CAFC explained that the claimed "'controller' is merely 'an activation mechanism'" and "nothing limits this activation to physical channels." Id. (citing embodiments of the patent where a remote controller activates a valve and noting that "[t]his activation must occur at least in part through a nonphysical connection."). According to the CAFC, it "was error to limit the claimed connection to physical connections." Id.

         The court agreed that my analysis that the valve and the pump must be "controlled by the controller" was "essentially correct." Id. The CAFC explained, "[i]n the context of claim 18, the controller is 'an activation mechanism' for controlling the components connected to it." Id. Then, while the CAFC agreed with Plaintiff that Claim 18 "expects interaction between the controller and the components connected to it, " it rejected Skedco's proposed construction of "connected to" to mean "interacts directly or indirectly with" because the "'852 patent describes the relationship between the controller and the pump and the valve as being one of control or activation, not 'interaction' more generally." Id.

         Based on this discussion, the CAFC held that the "correct construction of ''a controller connected to said pump and said at least one valve' is 'an activation mechanism configured to control a pump and a valve to which it is directly or indirectly joined, united, or linked.'" Id. According to the CAFC, "[t]his construction reflects the parties' agreement that 'controller' means 'an activation mechanism.'" Id. And, "[i]t is consistent with the plain meaning of 'connected to' as 'joined, united, or linked to.'" Id.

         II. Infringement Standards Generally

         A patent holder has the right "to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States[.]" 35 U.S.C. § 154(a)(1). A party infringes a patent if, "without authority, " it "makes, uses, offers to sell, or sells any patented invention, within the United States or imports into the United States any patented invention during the term of the patent[.]" 35 U.S.C. § 271(a).

         A device can infringe a patent literally or under the doctrine of equivalents. E.g., Energy Transp. Grp., Inc. v. William Demant Holding A/S, 697 F.3d 1342, 1352 (Fed. Cir. 2012) (noting that a device that does not literally infringe a claim may still infringe under the doctrine of equivalents). Infringement analysis involves two steps. Grober v. Mako Prods, Inc., 686 F.3d 1335, 1344 (Fed. Cir. 2012). First, the court determines the scope and meaning of the patent claims through the claim construction process and second, the claims as construed are compared to the allegedly infringing device. Id. (citing Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1454 (Fed. Cir. 1998) (en banc)). The two-step analysis applies to both literal infringement and infringement under the doctrine of equivalents. Deering Precision Instruments, LLC v. Vector Distrib. Sys., Inc., 347 F.3d 1314, 1322 (Fed. Cir. 2003). As indicated above, the step one claim construction occurred in this case in 2014 and was revised by the CAFC in its April 2017 Opinion. As to step two, "[p]atent infringement, whether literal or by equivalence, is an issue of fact, which the patentee must prove by a preponderance of the evidence." Siemens Med. Sols. USA, Inc. v. Saint-Gobain Ceramics & Plastics, Inc., 637 F.3d 1269, 1279 (Fed. Cir. 2011).

         III. Literal Infringement

         To establish literal infringement, "every limitation set forth in a claim must be found in an accused product, exactly." Transocean Offshore Deepwater Drilling, Inc. v. Maersk Drilling USA, Inc., 699 F.3d 1340, 1356 (Fed. Cir. 2012) (internal quotation marks omitted). As in the 2015 summary judgment motions, Defendant focuses its argument on Claim 18 and then asserts that the allegedly infringing BPS System does not infringe Claims 19 and 20 because those claims depend from Claim 18. A dependent claim cannot be infringed if the independent claim is not infringed. Wahpeton Canvas Co. v. Frontier, Inc., 870 F.2d 1546, 1552 n.9 (Fed. Cir. 1989).

         Defendant does not contest that the BPS System meets Elements 1, 2, or 5 of Claim 18. As it did previously, Defendant focuses on Elements 3 and 4 of Claim 18 and contends that the BPS System does not have the requisite valve or that such valve is not "connected to" a controller.

         A. Element 3: "at least one valve in fluid communication with said pump"

         My prior claim construction, confirmed by the CAFC, requires a valve to regulate, direct, or adjust the flow of fluid through a passageway by opening, closing, or restricting the passageway. 154 F.Supp.3d at 1102; 685 Fed.Appx. at 959. Both parties' experts opine that the internal valves of the three pumps used in the BPS System at any given time (Pump A, Pump B, and Pump C), regulate, direct, or adjust the flow of fluid through a passageway by opening. closing, or restricting the passageway and thus meet the claimed element. Stevick Dec. 19, 2014 Infring. Rep. ¶¶ 53-63, ECF 98-3; Guentzler Jan. 2015 Rebuttal Infring. Rep. ¶¶ 47-50 (Pump A); ¶¶ 53-54 (Pump B); ¶¶ 60-61 (Pump C), ECF 98-10. The same is true for what the parties refer to as "Pump D" although Pump D is a different type of device. Stevick Dec. 19, 2014 Infring. Rep. ¶¶ 64-66, ECF 98-3; Guentzler July 21, 2015 Dep. 153:17-154:11, ECF 98-15.

         Defendant does not seriously contest that the valve components within each of the four pumps meet the controlling definition of "valve" because the components "regulate[], direct[], or adjust[] the flow of fluid through a passageway by opening, closing or restricting the passageway."[2] Defendant argues however, that the current claim constructions require that the valve be a separate and distinct device from the pump, even if it may be physically housed within the pump, and because the internal valves of Pumps A, B, C, and D are nothing more than components of the pump that exist solely to allow each pump to function properly, there is no actual "valve." Thus, Defendant continues, none of the four pumps used in the BPS System meets Element 3 of Claim 18.

         In my December 8, 2015 Opinion, I stated that the claim language supported a conclusion that the pump and the valve were separate devices. 154 F.Supp.3d at 1108 ("[b]y disclosing a 'pump' in Element 2 and separately disclosing a 'valve' in Element 3, the language in Claim 18 suggests that these are two independent devices"). I also stated that the claim construction further supported a conclusion that these were separate devices because they perform distinct functions. Id. ("By defining each of these claim components as a 'device' and by defining each as performing a distinct function different from the other, the claim construction indicates that the pump and the valve disclosed in Claim 18 are separate devices").

         I recognized the competing expert opinions regarding the independence of the internal valves that reside within the pumps used in the BPS System. Id. at 1108-09. I noted that Plaintiff's expert Dr. Glen Stevick asserted that Pumps A-D were "structures that contain internal components which satisfy both the 'pump' and 'valve' limitations[.]" Id. at 1108. Stevick, I explained, deconstructed each of the four pumps and asserted, essentially, that each of them had "valve" components that operated independently from the "pump" components such that the "pump" components moved fluid by mechanical action and the "valve" components regulated fluid flow. Id. In contrast, Dr. William Guentzler, Defendant's expert, opined that Pumps A-D could not function to move fluid and perform as intended with the "valve" components removed. Id. at 1109. The valve components were not independent of the pump.

         For the purposes of the December 8, 2015 Opinion, I accepted Stevick's opinion that Pumps A-C had valve components that could be separated from the pump components and that Pump D's gear teeth acted as backflow-preventing valves. Id. I further credited Stevick's opinion that even with these valve components removed, the pumps could operate. Id. Nonetheless, I explained:

The valve components of Pumps A-D "regulate" the fluid only within the pumps themselves. The valve disclosed in Claim 18 is separate from the pump because the valve, as discussed above, is separately and independently connected to the controller/activation mechanism. And, while the components of Pumps A-D may be disassembled for the purposes of testing the operation of those pumps absent the "valve" portion, the BPS System does not use Pumps A-D with the components taken apart. Thus, even though the components can be separated for testing, the "valve" portions of Pumps A-D actually function as part of the pump. Each Pump A-D is a single device that has internal components that prevent backflow into the pump so that the pump will function efficiently to move fluid by mechanical action. Pumps A-D do not have an independent valve.

Id.; see also Id. at 1112 ("Pumps A-D do not satisfy the independent functions of the two devices (the valve and the pump) because the design of each of those pumps is that the internal valve and pump work together to make the pump work efficiently to move or transfer the fluid").

         The CAFC concluded that I erred in my analysis and determined that nothing in the patent claims or specification required that the valve be physically separate from the pump. 685 Fed.Appx. at 959-60. Although the CAFC accepted my claim constructions for "valve" and "pump, " agreed that each device performed a distinct function ("a 'pump' moves fluid and a 'valve' regulates fluid flow"), and expressly recognized that "a 'pump' is not a 'valve, '" it nonetheless found that the claim language contained no limitation on the "structural relationship between the pump and the valve" other than that the valve be in fluid communication with the pump. Id. at 959-60. Nothing prevented the pump from being "in fluid communication with" an internal valve and "nothing in the claims or specification prohibits a valve from residing within a pump." Id. Further, in rejecting Defendant's argument that because the pump and the valve are separately listed claim elements they are presumptively distinct, the CAFC stated that "nothing in the agreed-upon constructions of 'pump' and 'valve' forbids a pump from housing an internal valve." Id. at 960.

         Defendant's argument here poses the question of whether "components" which perform the function of a valve as defined in the claim construction, but which do so solely as part of the pump and are integral to the movement of fluid by mechanical action, are nonetheless not "valves" as defined because, by virtue of their indispensability to pump function, they are not an independent "device" and they perform no separate function. That is, even though the CAFC concluded that a "valve" may reside inside a "pump" consistent with the claim language, are these internal components nonetheless inconsistent with the claim language because they perform no discrete "valve" function and are not functionally an independent device?

         I am constrained by the CAFC's decision to answer the question with a "no, " the internal components are not inconsistent with the claim language. The CAFC's holding is directed to the physical separation of the pump and valve. But, its discussion reflects a determination that the "valve" components residing inside each version of the pump meet the Element 3 limitation even if they are integral to the effective functioning of the pump. This is seen by the fact that this issue was addressed in my December 8, 2015 Opinion, by the fact that Defendant raised the issue in its brief to the CAFC, by the questioning of Defendant's counsel during oral argument, and by statements in the CAFC's opinion.

         My December 8, 2015 Opinion, as seen from the discussion above, unambiguously set forth a discussion regarding how the valve components of Pumps A-D performed no independent function and instead operated with the pump to make the pump satisfy its required function of moving or transferring fluid by mechanical action. Defendant raised the issue in its brief on appeal. See Skedco, Inc. v. Strategic Ops., Inc., No. 16-1349, ECF 39 (Fed. Cir. July 15, 2016) (Def.'s Appellee Br.). Beginning in the Introduction, Defendant discussed what it called Plaintiff's "deconstructed pump theory" and explained why the argument failed. Def.'s Appellee Br. 5-6. Defendant later explained why Claim 18 required a valve to be a separate device from the pump and thus could not be something that is part of the "internal, integral structure of the pump." Id. at 20. Defendant framed the dispute as "not whether a 'valve' can be 'in fluid communication' with a 'pump' when that valve and pump are housed in the same single structural element[, ]" but "whether each Pump A-D, as used in the BPS, performs the separate and independent functions of the two separately claimed devices, a 'pump' and a 'valve.'" Id. at 41; see also Id. at 42 (quoting portion of December 8, 2015 Opinion set out above explaining that the "valve" portions of Pumps A-D function as part of the pump).

         During oral argument before the CAFC, Judge Chen and Judge Prost both questioned Defendant's counsel as to why the valve could not be inside the pump. Stevick Aug. 15, 2017 Supp'l Reb. Infring. Rep. 2-3, ECF 224-4. Judge Chen asked why "can't the valve be inside the pump?" Id. at 2. Defendant's counsel tried to explain that there was no valve because it was just a pump device with many components within that device. Id. But, Judge Chen asked directly: "Is one of the components a valve?" to which Defendant's counsel answered "[y]es." Id. Defendant's counsel persisted in trying to communicate that the valve component just "functions in the pump." Id. Judge Chen responded by asking still, why could that valve not meet the claim limitation for the valves? Id. Citing Powell v. Home Depot U.S.A., Inc., 663 F.3d 1221 (Fed. Cir. 2011), which I had discussed in my December 8, 2015 Opinion, Judge Chen explained that although there were two claim limitations in Powell, the CAFC had nonetheless affirmed the jury's verdict that the accused product's single box met both limitations. Id. Judge Chen wondered "why couldn't that also potentially be applicable here, or at least at a minimum, raise a factual question for a jury or a district court to decide as a factual matter?" Id. at 3. Judge Chen was not persuaded that Powell was distinguishable, noting that here, there "are two specific devices[, ]" "[j]ust like in Powell." Id. Still, Defendant's counsel pressed in his position that in Powell, there were specific teachings in the specification envisioning that the two devices could be integrated into one. Id. At that point, Judge Prost remarked that if the claim language is broad enough to allow it, then even without teaching in the specification, it would be allowed, absent a disclaimer. Id.

         The CAFC was aware of the issue present here and posed questions to counsel during oral argument suggesting that despite Defendant's contentions that a valve was not a pump and that the valve components function only as part of the pump, the valve components still met the limitation for valves. The CAFC's statements in its decision confirm this. In particular, I note the court's determination that "Claim 18 contains no other limitation [aside from "in fluid communication with"] governing the structural relationship between the pump and the valve." 685 Fed.Appx. at 959. Additionally, even in the face of the December 8, 2015 Opinion and Defendant's arguments on appeal, the court still stated that "nothing in the agreed-upon constructions of 'pump' and 'valve' forbids a pump from housing an internal valve." Id. at 960. Then, well aware of how an internal valve functions, the court concluded that the internal valve components were consistent with the constructions of "pump" and "valve." Finally, the court's observation that "[a] pump does not cease moving fluid - i.e., being a 'pump' - just because an internal valve adjusts fluid flow[, ]" shows that the court, fully cognizant of the separate functions of the valve and the pump, nonetheless held that these functions could be performed by components housed together in a pump. Id. at 959. With that, the CAFC's opinion requires that I conclude that as long as the components perform the function as defined, the valve limitation in Element 3 is satisfied.

         Even assuming that Guentzler's opinion is correct, and that the internal valves in Pumps A-D are not independent from the pumps, that does not mean that they do not satisfy the limitation of a "valve." Because Guentzler's reports and testimony show that components within each of Pumps A-D "regulate, direct, or adjust the flow of fluid through a passageway by opening, closing, or restricting the passageway, " there is no dispute that the components meet the definition of a "valve." Therefore, the "valves" in Pumps A-D of the BPS System meet Element 3 of Claim 18.

         B. Element 4: "a controller connected to said pump and said at least one valve"

         As noted above, the CAFC revised my claim construction of this phrase to mean "an activation mechanism configured to control a pump and a valve to which it is directly or indirectly joined, united, or linked." 685 Fed.Appx. at 961. It contemplates both that the activation mechanism "control" the pump and the valve and that the activation mechanism be directly or indirectly joined, united, or linked to the pump and the valve. There is no dispute that the BPS System activation mechanism controls the pump and that the activation mechanism is directly joined to the pump via wiring. The issue is whether the internal valves in Pumps A-D meet the limitation.

         Plaintiff argues that Pumps A-D each meet this element because both a wireless key fob and a wired activation mechanism responsive to the key fob (a) control the pump and the valve within the pump, and (b) are indirectly joined, united, or linked to the pump and to the valve within the pump. Pl.'s Mot. for Sum. J. 12, ECF 223. Plaintiff argues that "[e]ach of Pumps A-D has a valve component controlled by the action of the pump and thus, [the valve] is indirectly controlled by and connected to the controller." Id.; see also Pl.'s Reply 6, ECF 238; Pl.'s Opp. 7-9, ECF 233.

         Defendant contends that the BPS controller system is configured to control only the pump, not the valve. Defendant focuses on the CAFC's rejection of Plaintiff's proposed construction of "connected to" as "interacts directly or indirectly with." Defendant argues that Plaintiff's contentions regarding how the BPS System meets Element 4 of Claim 18 describe only an "indirect interaction" between the controller/activation mechanism and the valve, which the CAFC rejected. Defendant suggests that a more direct connection is required.

         The evidence in the record from both parties' experts establishes that when the controller turns on electric power to the pump, the pump creates hydraulic pressure that activates the internal valves in each pump. Plaintiff refers to this as an "electric-over-hydraulic connection." Pl.'s Reply 6, ECF 238. Stevick opines that the BPS System controller is directly connected to each pump and indirectly connected to the valve components, and that when activated, the controller starts the pump which causes the valve to cyclically open and close. Stevick Claim Chart 15-17, ECF 98-2 (citing to (a) Ex. 1 to Stevick Dec. 19, 2014 Infring. Rep., ECF 98-3 (BPS Product Descrip.); (b) Stevick Dec. 19, 2014 Infring Rep. ¶¶ 67-69, ECF 98-3; and (c) Guentzler Dep. 158:25-159:9, 163:9-20, ECF 98-15); see also Stevick Aug. 15, 2017 Supp'l Reb. Infring. Rep. 11, ECF 224-4 ("In each version of the BPS, the controller activates the pump electrically, and indirectly activates the valve via the pump and the fluid pressure that the pump creates"); see also Guentzler July 21, 2015 Dep. 158:25-159:9, 163:9-20, ECF 98-15 (testifying that when the BPS controller is turned on, it sends 12 volts to the model of the pump and that when the pump starts to pump, the movement of the plunger controls the valves).

         To the extent Defendant suggests that a physical connection between the activation mechanism and the valve is required, Defendant's contention is foreclosed by the CAFC's opinion which specifically held that the term "connected to" contemplated both direct and indirect connections. The court expressly rejected the contention that Claim 18 required a physical connection. 685 Fed.Appx. at 961. To the extent Defendant argues that the valve must be activated independently from the pump, nothing in the construction of Element 4 or the CAFC's opinion suggests that is necessary.

         During oral argument at the CAFC, Judge Chen, in asking about an "indirect or direct connection, " stated that "connected to" could be "an indirect connection in the sense that you have to go through some other component in order to, you know, activate that downstream component." Stevick Aug. 15, 2017 Supp'l Reb. Infring. Rep. 5, ECF 224-4. And, in the decision itself, the CAFC explicitly pointed to an indirect connection in the '852 Patent. 685 Fed.Appx. at 960-61 ("The patent describes activating valve 124 'though [sic] a controller (or remote control switch) 126' despite a lack of direct connection between the controller and the valve. . . . Using 'connected to' to cover indirect connections is also more consistent with the term's plain meaning"; "'controller' is merely 'an activation mechanism, ' . . . and nothing limits this activation to physical channels. Indeed, the '852 patent includes several embodiments where a remote controller 160 activates a valve. . . . This activation must occur at least in part through a nonphysical connection.") (emphasis added).

         The CAFC's acknowledgment that indirect connection includes activating a downstream component by going through another component and its example of indirect control support a conclusion that going through the "other component" of the pump to activate the valve satisfies the limitation in Element 4 as construed by the CAFC. Given that the valve is a subdevice/component of the pump and it is undisputed that the activation mechanism activates the pump, the valve is also activated by the mechanism, albeit indirectly, and thus the BPS System and each one of Pumps A-D meets the required limitation of having an activation mechanism configured to control a pump and a valve to which it is directly or indirectly joined, united, or linked.

         C. Stevick's Opinion

         In its Memorandum in Opposition to Plaintiff's Summary Judgment Motion, Defendant argues that Plaintiff has presented no post-CAFC Opinion expert opinion setting forth an infringement analysis using the proper construed claim language. Thus, Defendant argues, Plaintiff cannot sustain its burden of proving infringement. Def.'s Opp. 1, ECF 234. Defendant objects to any testimony by Stevick related to the post-CAFC Opinion claim constructions because he provided no expert opinion on those issues. Because Stevick issued no new report after the CAFC revised the construed claim terms, Defendant argues that Stevick offers no opinion on these terms on which this Court can rely.

         Following the issuance of the CAFC mandate, I set a new case schedule. June 20, 2017 Am. Min. Ord., ECF 203. I denied Defendant's request to reopen fact discovery but I allowed reopening of expert discovery. Id. I set a schedule for disclosure of initial expert reports as follows: August 1, 2017 for initial expert reports; August 15, 2017 for supplemental/rebuttal reports; and September 1, 2015 for the close of expert discovery. Id.

         Plaintiff did not tender a new infringement report to Defendant on August 1, 2017. See Def.'s Mot. to Strike, ECF 207. Plaintiff did provide a Supplemental Report from Stevick on August 15, 2017. Id. On September 6, 2017, Defendant moved to strike Stevick's August 15, 2017 Supplemental Report because several of the initial pages were not, in Defendant's opinion, rebuttal to an August 1, 2017 Supplemental Infringement Report by Guentzler, but were instead an initial report which was untimely. As a result, Defendant argued it was deprived of the opportunity to rebut Stevick's infringement opinion. Id.

         In a September 8, 2017 Order, I denied Defendant's motion to strike:

ORDER: The Court has reviewed Defendant's Motion to Strike Plaintiff's "Supplemental Expert Report of Glen Stevick in Rebuttal to Supplemental Expert Report of William D. Guentzler" 207. The Court has also reviewed Dr. Stevick's report that is at issue in Defendant's motion. According to Defendant, the first portion of Dr. Stevick's report (pages 2-6) to which the motion to strike is addressed is not actually a rebuttal to Dr. Guentzler's report but is an untimely new expert report on infringement offered by Dr. Stevick. (Defendant's motion does not address pages 7 - 15 of Dr. Stevick's report which is clearly delineated as a rebuttal to Dr. Guentzler's report)[.] Based on the Court's reading of this portion of Dr. Stevick's report, Dr. Stevick opines that the Federal Circuit's decision clarified the original claim construction this Court rendered in 2014. Dr. Stevick further states that the "concepts described" by the Federal Circuit are as he described in earlier reports or are consistent with his understanding of the 2014 claim construction issued by this Court.
I DENY the motion to strike the report 207 because the opinion offered by Dr. Stevick is not a new opinion regarding infringement but is a reassertion of his prior infringement opinion based on his conclusion that the Federal Circuit's decision clarified the claim construction consistent with the claim construction that Dr. Stevick previously relied on. Dr. Stevick's interpretation of the Federal Circuit's opinion is not controlling on this Court, however, and Plaintiff may or may not be successful in defending Dr. Stevick's interpretation going forward. At this point, because Dr. Stevick does not appear to be offering a new opinion on infringement, there is no basis to strike his August 15, 2017 report as untimely.

ECF 208.

         Stevick's pre-CAFC infringement opinions are sufficient to sustain Plaintiff's burden of proof. Stevick's original opinions remain valid unless they are inconsistent with the post-CAFC Opinion claim constructions. Stevick's opinions were based on the 2014 claim constructions which are set forth in the December 8, 2015 Opinion. 154 F.Supp.3d at 1102. As the CAFC noted, the December 8, 2015 Opinion added claim limitations not previously announced in the 2014 Markman hearing or the Markman Opinion. 685 Fed.Appx. at 960. Before the December 8, 2015 Opinion, nothing in the prior claim constructions suggested that the "in fluid communication with" limitation required physically separate pump and valve structures. Before the December 8, 2015 Opinion, nothing in the prior claim constructions suggested that the "controller connected to" limitation required a direct, physical connection. It was not until the December 8, 2015 Opinion was issued that these additional limitations were rendered. I even acknowledged in a footnote in that decision that to the extent the additional limitations were viewed as changed claim constructions, the law supported my authority to do so. Id. at 1108 n.6.

         I read the CAFC decision as addressing and rejecting the additional limitations I provided in the December 8, 2015 Opinion. I do not read that decision as fundamentally altering the 2014 claim constructions. As a result, Stevick's original infringement opinions are based on claim constructions which still govern, albeit with some clarification by the CAFC. And, those clarifications are consistent with the interpretations of the 2014 claim constructions that Plaintiff and Stevick have had since they were issued in 2014. Defendant's objection to Stevick's infringement opinions is overruled.

         D. Summary re: Literal Infringement

         Plaintiff meets its burden of establishing that the BPS System literally infringes all elements of Claim 18 of the '852 Patent. The record presents no material disputed issues of fact as to the literal infringement of this claim.

         As to Claims 19 and 20, Defendant offers no evidence or argument specifically addressed to those claims. Claims 19 and 20 depend from Claim 18. Claim 19 discloses a trauma training system as disclosed in Claim 18 but with two wound sites. Claim 20 discloses a trauma training system disclosed in Claim 18 with a container housing the reservoir, pump, and at least one valve. Stevick opines that the BPS System meets all elements of Claims 19 and 20. Stevick Claim Chart 19-21, 23, ECF 98-2; Stevick Dec. 19, 2014 Infring. Rep. ¶¶ 74-76, 77-78, ECF 98-3; Ex. D to Stevick Dec. 19, 2014 Infring. Rep. 51-52, ECF 98-3 (BPS Product Description). Guentzler's opinion is not inconsistent with Stevick's. Guentzler Jan. 2015 Rebuttal Infring. Rep. ¶ 43 (describing four separate blood supply lines), ¶ 73 (describing wound sites), ECF 98-10. There are no disputed issues of fact regarding the literal infringement of Claims 19 or 20.

         I grant summary judgment on literal infringement of Claims 18, 19, and 20 to Plaintiff and deny Defendant's motion on that issue. By granting summary judgment to Plaintiff on the issue of literal infringement, I need not address Plaintiff's alternative contention that the BPS System infringes Claims 18, 19, and 20 of the '852 Patent under the doctrine of equivalents. Thus, I deny both parties' motions addressed to the doctrine of equivalents, as moot.

         OBVIOUSNESS

         I. Legal Standards

         United States patents are presumed valid by statute. 35 U.S.C. § 282. Defendant bears the burden of establishing invalidity by clear and convincing evidence. Microsoft Corp. v. i4i Ltd. P'ship, 564 U.S. 91, 100-01, 110-13 (2011); Carnegie Mellon Univ. v. Marvell Tech. Grp., Ltd., 807 F.3d 1283, 1293 (Fed. Cir. 2015). The presumption mandated by Section 282 applies to validity challenges based on obviousness. See Senju Pharm. Co. v. Lupin Ltd., 780 F.3d 1337, 1350 (Fed. Cir. 2015). While the clear and convincing burden of proof always applies to the patent validity challenger, if "a challenger introduces evidence that might lead to a conclusion of invalidity-what we call a prima facie case, " the patentee is "well advised to introduce evidence sufficient to rebut that of the challenger[.]" Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1360 (Fed. Cir. 2007) (explaining that "the presumption of validity remains intact and the ultimate burden of proving invalidity remains with the challenger throughout the litigation, " and further that the "trial court has the responsibility to determine whether the challenger has met its burden by clear and convincing evidence by considering the totality of the evidence, including any rebuttal evidence presented by the patentee.") (internal quotation marks omitted).

         A patent is rendered invalid for being obvious if "the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains." 35 U.S.C. § 103. "Obviousness is a question of law based on underlying factual findings: (1) the scope and content of the prior art; (2) the differences between the claims and the prior art; (3) the level of ordinary skill in the art; and (4) objective considerations of nonobviousness." In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litig., 676 F.3d 1063, 1068 (Fed. Cir. 2012). These four factors are referred to as the "Graham factors" after Graham v. John Deere Co., 383 U.S. 1, 17- 18 (1966). E.g., ABT Sys., LLC v. Emerson Elec. Co., 797 F.3d 1350, 1357 (Fed. Cir. 2015).

         Additionally, to establish obviousness, there must be evidence of a motive to combine as well as a reasonable expectation of success in doing so:

Generally, a party seeking to invalidate a patent as obvious must demonstrate by clear and convincing evidence that a skilled artisan would have had reason to combine the teaching of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success from doing so.

In re Cyclobenzaprine, 676 F.3d at 1068-69 (internal quotation marks omitted). The burden also includes showing that the skilled artisan would have chosen the particular references asserted in support of the obviousness argument. WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1337 (Fed. Cir. 2016). As with the four Graham factors, whether there is a reason or motive to combine prior art references is a question of fact. In re Van Os, 844 F.3d 1359, 1360 (Fed. Cir. 2017).

         In 2007, the Supreme Court rejected a "rigid approach" of the CAFC's "teaching, suggestion, or motivation" (TSM) test. KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 415, 419 (2007). Before KSR, the court required

that a patent challenger show that a person of ordinary skill in the art would have had motivation to combine the prior art references and would have had a reasonable expectation of success in doing so [and] that the reason, suggestion, or motivation to combine may be found explicitly or implicitly: 1) in the prior art references themselves; 2) in the knowledge of those of ordinary skill in the art that certain references, or disclosures in those references, are of special interest or importance in the field; or 3) from the nature of the problem to be solved.

Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010) (citations and internal quotation marks omitted). But, post-KSR, the CAFC, and thus, district courts analyzing obviousness, must take a more "expansive and flexible approach" in determining whether a patented invention was obvious at the time it was made. Id.

         Additionally, KSR reiterated the Supreme Court's previous caution in granting patents on inventions which are combinations of prior art elements:

For over half a century, the Court has held that a patent for a combination which only unites old elements with no change in their respective functions obviously withdraws what is already known into the field of its monopoly and diminishes the resources available to skillful men. This is a principal reason for declining to allow patents for what is obvious. The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.

KSR, 550 U.S. at 415-16 (citation, internal quotation marks, and ellipsis omitted). The Court further explained:

When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability. For the same reason, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill. . . . [A] court must ask whether the improvement is more than the predictable use of prior art elements according to their established functions.

Id. at 417.

         It is clear that post-KSR, "common sense" plays a role in the obviousness analysis. But, the CAFC has made equally clear that "the mere recitation of the words 'common sense' without any support adds nothing to the obviousness equation." Mintz v. Dietz & Watson, Inc., 679 F.3d 1372, 1377 (Fed. Cir. 2012). The KSR Court itself acknowledged that even through the lens of "common sense, " it is still important to identify a reason that prompted the inventor to combine references. KSR, 550 U.S. 418-19. The Court explained:

Although common sense directs one to look with care at a patent application that claims as innovation the combination of two known devices according to their established functions, it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does. This is so because inventions in most, if not all, instances rely upon building blocks long since uncovered, and claimed discoveries almost of necessity will be combinations of what, in some sense, is already known.

Id.

         Recent CAFC cases confirm that evidence of a motivation to combine is part of the obviousness inquiry. E.g., Metalcraft of Mayville, Inc. v. The Toro Co., 848 F.3d 1358, 1366 (Fed. Cir. 2017) ("In determining whether there would have been a motivation to combine prior art references to arrive at the claimed invention, it is insufficient to simply conclude the combination would have been obvious without identifying any reason why a person of skill in the art would have made the combination"). Nonetheless, according to KSR, in "determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose of the patentee controls. What matters is the objective reach of the claim. If the claim extends to what is obvious, it is invalid under § 103." KSR, 550 U.S. at 419.

         Finally, obviousness may not be based on hindsight. The statute requires that obviousness be assessed at the time the invention was made. 35 U.S.C. § 103 (requiring that the obviousness determination be made as of the time of the invention's effective filing date); see also KSR, 550 U.S. at 421 (warning against "the distortion caused by hindsight bias" and advising caution in the face of "arguments reliant upon ex post reasoning"); Senju Pharm. Co., 780 F.3d at 1356 ("Obviousness is a matter of foresight, not hindsight.").

         II. Graham Factors - ...


Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.