771 F. Supp. 2d 1164
N.D. Cal.2010Background
- Conceptus sells Essure, a transcervical permanent contraceptive device approved by the FDA in 2002; it is Conceptus's only marketed product.
- Hologic markets Adiana, a competing transcervical contraceptive system that received FDA approval in July 2009.
- The dispute centers on the '361 patent, with asserted claims 8, 37, and 38; claim 36 is the independent claim underlying claims 37 and 38.
- Claim construction narrowed to require three components for claim 8 and a three-step method for claims 36–38, with disputes over whether contraception must occur while the fallopian tube is open.
- The court held that claim 36 requires permanent affixation while the tube is at least partially open, but it does not require contraception to occur while the tube is open.
- Conceptus sought summary judgment that Hologic infringed claims 37 and 38 and that there were no noninfringing alternatives; Hologic sought noninfringement and invalidity of claims 8, 37, and 38.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Does claim 36 require contraception while the tube is open? | Conceptus contends claim 36 may not require open-tube contraception; this is not essential to the final step. | Hologic argues claim 36 requires contraception to occur while the tube is open. | Claim 36 does not require contraception while the tube is open. |
| Do claims 37 and 38 literally infringe or infringe under the doctrine of equivalents? | Conceptus asserts Adiana meets claims 37/38 via tissue ingrowth and occlusion. | Hologic contends Adiana does not meet the claimed method steps and components. | Summary judgment on direct infringement of claims 37/38 denied; jury must decide factual questions. |
| Does the Adiana device literally infringe claim 8 or infringe under the doctrine of equivalents? | Conceptus maps Adiana to three distinct components including a bond between a resilient body and retention structure. | Hologic presents a unitary Adiana matrix lacking three separate components, arguing no literal infringement and no equivalent. | Claim 8 is not literally infringed and not infringed under the doctrine of equivalents. |
| Are claims 8, 37, and 38 valid on written description, enablement, or anticipation/obviousness grounds? | Conceptus contends claims are adequately described and enabled; anticipation is limited to claim 8 by prior art. | Hologic asserts inadequate written description, lack of enablement, and anticipation/obviousness defenses. | Validity is not established on summary judgment; issues remain for trial. |
| Did non-infringing alternatives exist during the relevant damages period? | Conceptus seeks a finding that no acceptable noninfringing substitutes existed. | Hologic asserts substitutes were available through alternative designs. | Conceptus is entitled to judgment that no acceptable noninfringing alternatives existed. |
Key Cases Cited
- Celotex Corp. v. Catrett, 477 U.S. 317 (1986) (summary judgment standard; movant bears burden to show no genuine dispute of material fact)
- Anderson v. Liberty Lobby, Inc., 477 U.S. 242 (1986) (genuine dispute material fact required for trial)
- D.M.I., Inc. v. Deere & Co., 755 F.2d 1570 (Fed.Cir.1985) (patent infringement can be resolved on summary judgment when appropriate)
- Phillips v. AWH Corp., 415 F.3d 1303 (Fed.Cir.2005) (claims construed with intrinsic record guidance; specification informs claim meaning)
- Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996) (claim construction is a matter of law)
- Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576 (Fed.Cir.1996) (claims must be read in view of the specification)
- Grain Processing Corp. v. American Maize-Prods. Co., 185 F.3d 1341 (Fed.Cir.1999) (substitute availability for damages periods; inference where not marketed)
- Panduit Corp. v. Stahlin Bros. Fire Works, Inc., 575 F.2d 1152 (6th Cir.1978) (hypothetical negotiation concept in royalty analysis)
- Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17 (1997) (doctrine of equivalents limitations and prosecution history)
- Univ. of Rochester v. G.D. Searle & Co., 358 F.3d 916 (Fed.Cir.2004) (written description requirement and enablement in 35 U.S.C. § 112)