MedIdea, LLC v. DePuy Orthopaedics, Inc. (17-cv-11172).

MedIdea accused DePuy of infringing four patents related to knee replacements in Illinois, with the case transferred to Massachusetts in light of the TC Heartland decision. MedIdea conceded non-infringement on all but one claim following claim construction. In November, Judge Sorokin granted DePuy summary judgment of non-infringement on the sole remaining claim, finding that the claims as construed required multiple cam surfaces that were absent in the accused knee prosthetics. Judge Sorokin further construed the claim over MedIdea’s objection, finding that MedIdea’s post-construction amended contentions created issues that required further construction of the claim, and that in any event if the infringement issue related to a claim construction issue that the court had not yet resolved, the court was duty-bound to construe the term. He then determined that, while the claim itself did not so require, the intrinsic evidence taken as a whole required the claimed “points of cam action” to mean “convex surfaces,” in part because every embodiment of the specification showed convex cam surfaces. He acknowledged that this, standing alone, is not sufficient to so limit the claims, but found this fact to still have a bearing on the construction of the term, and that, combined with statements made by MedIdea in both the prosecution of the patents and in their initial complaint and contentions filed in the litigation (and since abandoned for MedIdea’s current theory of infringement), the claims should be so construed. In particular, in an IPR proceeding on the patents-in-suit. MedIdea characterized the “disclosed and claimed invention” as having points of cam action with convex surfaces – the use of “disclosed and claimed invention” estopped any argument that MedIdea was discussing only non-limiting examples. Notably, Judge Sorokin did not place any estoppel on DePuy based on their statements made in the IPR, because as the non-patentee, their statements did not become a part of the prosecution history of the patents and because their positions were not adopted by the Board and thus did not create a judicial estoppel situation.

MedIdea conceded that, under this claim construction, the accused prosthesis lacks multiple convex cam surfaces and thus does not infringe, resulting in summary judgment in favor of DePuy. Judge Sorokin subsequently entered final judgment of non-infringement and dismissed DePuy’s counterclaims without prejudice.

SiOnyx, LLC et al. v. Hamamatsu Photonics K.K., et al. (15-cv-13488).

Closing out this dispute, at least at the District Court, Final Judgement was entered awarding SiOnyx:

  • $1,377,109 in contractual and unjust enrichment damages plus $1,752,017 in pre-judgment interest for a total of $3,129,126;
  • post-judgment interest at 2.4% pursuant to 28 U.S.C. §1961, with an accounting of post-verdict sales to occur;
  • judgment that the ‘467 patent was willfully infringed;
  • addition of Dr. James Carey as co-inventor of the ‘467 patent;
  • ownership of nine U.S. patents; and
  • a permanent injunction barring infringement of all ten patents by Hamamatsu.

Let the appellate process begin…

Emseal Joint Systems, Ltd. v. MM Systems Corp. (14-cv-14706).

Judge Zobel, having issued a claim construction that rendered Emseal’s infringement position unfeasible, issued a final judgment of non-infringement pursuant to Fed. R. Civ. P. 54(b).  MM Systems had opposed Emseal’s motion for entry of final judgment of non-infringement on the grounds that, absent a tolling of the statute of limitations on its counterclaims, it would most likely lose the ability to pursue those claims.  Emseal had sought to have the counterclaims dismissed with or without prejudice, or in the alternative to enter final judgment under Rule 54(b) and stay the counterclaims.  MM Systems was concerned that, with the litigation having been filed in 2014, a dismissal of its counterclaims would result in their not being capable of being refiled, as a dismissed complaint is treated as though it never existed for Federal statute of limitations purposes, and provides for refiling within one year for state statute of limitations purposes.  MM Systems also asserted that the Federal Circuit would not accept jurisdiction if the counterclaims were stayed rather than dismissed (although I note that the principal case cited for this proposition, Pause Technology v. TiVo, notes that the Federal Circuit lacks jurisdiction in such circumstances “short of meeting the conditions specified in Rule 54(b)…”).  Judge Zobel stayed any activity relating to the counterclaims pending the outcome of the appeal.