United States District Court, D. Oregon
C. Brunette Steven T. Lovett Elliott J. Williams, STOEL RIVES
LLP., Brian C. Park, STOEL RIVES LLP., Attorneys for
L. Eastman Kenny Nguyen EASTMAN & McCARTNEY LLP., Michael
G. Neff, HAGLUND KELLEY LLP., Attorneys for Defendant.
OPINION & ORDER
A. HERNANDEZ UNITED STATES DISTRICT JUDGE.
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. 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.
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.
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.
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.
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)).
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).
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
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).
Prior Decision/Claim Construction & CAFC Opinion
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.
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.
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
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.
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
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.
Infringement Standards Generally
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).
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).
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).
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.
Element 3: "at least one valve in fluid communication
with said pump"
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.
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." 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.
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").
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.
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
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
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.
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
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.
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).
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.
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.
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.
Element 4: "a controller connected to said pump and said
at least one valve"
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.
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
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.
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
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
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
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.
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.
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.
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.
September 8, 2017 Order, I denied Defendant's motion to
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.
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.
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.
Summary re: Literal Infringement
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.
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.
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.
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).
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).
to establish obviousness, there must be evidence of a motive
to combine as well as a reasonable expectation of success in
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).
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.
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
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.
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
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.
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
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
Graham Factors - ...