*1 MEDICAL CORPORATION CORPORATION, MEDISYSTEMS
Plaintiffs-Appellants, CO., LTD. and JMS NORTH CORPORATION, De
AMERICA Appellants,
fendants-Cross PTY, Ltd., Defendant- Corporation
ITL Appellant.
Cross PTY, Ltd., Plaintiff- Corporation Appellant,
Cross Corporation,
DSU Medical
Defendant-Appellant. 04-1620, 05-1048, 04-1052.
Nos. Appeals,
United States Court
Federal Circuit. 13, 2006.
Dec. *4 O’Brien, of the Northern District California entered Alschuler Grossman J. William Monica, 46-47, LLP, finding judgment of Santa a final claims Kahan Stein & California, plaintiffs-appellants. for of argued 50-52 the ’311 invalid obvious. Alan H. Blank- on the brief was judg- Of counsel a final The trial also entered McAu- enheimer, Ehrman White & verdict, Heller ment, pursuant to the unanimous LLP, Diego, of California. liffe San infringement against JMS and JMS North American on claims and 54 of Zaitlen, Winthrop Pillsbury H. Richard non-infringement the ’311 LLP, Angeles, of Los Cali- Shaw Pittman Corp. for ITL. DSU Med. JMS fornia, appel- argued for defendants-cross PTY, N. Am. & Co., Ltd., him on al. et With lants C-00-1826-DLJ, C-99-2690-DLJ, Nos. Forman; D. the brief were Julian (N.D.Cal. 2004) 7,May slip op. at 3-4 Kramer, Washington, Of T. DC. Kevin McLean, (Judgment). awarded total Barton, R. counsel were Ross Sutherland, $5,055,211 Jacobs, damages Blair M. Virginia; and LLP, America, and Washington, against JMS and JMS North & Brennan Asbill judgment trial court entered a final DC. *5 holding severally and liable for jointly both Bernstein, The Law N. Bernstein Marc error, Finding the award. no reversible Francisco, California, ar- Group, of San affirms. this court ITL appellant, gued for defendant-cross PTY, on the With him Corporation Ltd. Flynn P. and Sarah
brief Ronald were I.
Botz. patents guard- The and ’072 claim a ’311 LINN, RADER, SCHALL, and
Before ed, assembly. The invention winged-needle Judges. Circuit reduces the risk of accidental needle-stick injuries. puncture wounds can Needle by court filed Opinion for the Circuit transmit blood-borne diseases such Judge RADER. B and AIDS. ’311 and ’072 Hepatitis effectively guard stan- patented inventions opinion Judge filed Chief Concurring prevent needle- MICHEL, winged-needle-sets dard MAYER on Judge and Circuit injuries. B. en Section III stick banc RADER, “slotted, Judge. Circuit claims a lock- The ’311 needle, a guard shielding a and ing for (DSU) and Corporation Medical winged assembly including needle nee- (MDS) (collec- Corporation Medisystems hub, slotted, dle, winged and a needle DSU) tively Company, Limited sued JMS ’311, col.1, 1. 8-11. This locking guard.” (JMS) (collective- and JMS North America guard includes both slotted “[a] invention JMS) Pty, Limited ly Corporation and position locking for a needle a shielded (ITL) patent infringement, for inducement the patient”, as the is removed from needle infringe, contributory infringement and winged assembly guarded “a needle 5,112,311 of United Patent Nos. States slidably guard.” mounted within the (’311) (’072). 5,266,072 a six- After Id., 5-6 illustrate one Figures abstract. produced a week unanimous ver- dict, invention: patented embodiment of the the United States District Court ™
Figure needle, a side view of a winged (Pla- the name Platypus Guard Needle (3), needle hub guard slotted needle typus). ITL manufactures the (1). ’311 col. 11.4-6. In this Malaysia Singapore. The Platypus (5) depiction, the needle remains retracted needle guard is a product: “stand-alone” (1). guard within needle Figure Id. 6 small configured piece of plastic. This shows the same from needle above. ’311 plastic guard structure is not attached to 3,11. patent, col. 7-10. any other words, device. In other *6 Utterberg, Mr. David a co-inventor of Platypus needle, does not include a but the ’311patent, owns DSU and MDS. DSU only a sheathing structure. Some claims patent; owns the ’311 MDS has an exclu- of the ’311 patent recite both a slotted sive license make and sell the in- ’311 guard guarded and a winged needle as- needles, vention for large-bore including use, sembly. Before Platypus resem- (AVF) Arterial-Venous Fistula sets used open bles an clamshell (open-shell configu- for dialysis aphaeresis. MDS markets ration). use, During the halves of the AVF needles under brand names clam shell close to form guard the needle “MasterGuard” and “PointGuard.” (closed-shell configuration). The following device, The alleged infringing made by illustration shows in open-and (an ITL company) Australian sells under closed-shell configuration: Malaysia. JMS ITL in 18685, 18629, Singapore DSU of Record Transcript Platypus guards closed generally North Corp. JMS Medical distributing sets before PTY, around needle Nos. ITL& America (Fed.Cir. them to customers. 05-1048, Sept, 04-1620, 05-1052 2004) Platypus has (Transcript). The Platypus infringes alleges that the DSU closed, “jaw.” When a lower upper an alleges also patent. ’311 DSU and over jaw jmS around upper extends to and ITL contributed induced use, a During inner, jaw. lower laps the sought infringement. each other’s Platypus and closes medical technician it until could infringing Platypus iTL’s se\\ to the tubing it around connected locks non-infringing prod- its produce substitute the tech assembly. When winged needle uct, sup- offered WingEater. patient, from a needle nician removes Platypus. addition- piy the tube guard down slides the worker damages from JMS because ally seeks *7 assembly’s wings meet the needle until a ability to renew Master- “stole” MDS’s their wings The apart. pry jaws the a cus- with former license Guard exclusive into assembly slide needle attached Inc. Manufacturing, tomer, USA Fresenius the ever guard, forcing jaws through the (Fresenius). a way into wings make their the
wider as
II.
Ulti
guard’s
at the
back.
opening
notched
open
the
into
rear
mately
wings slide
the
2001,
5,
February
the
On
jaws
order,
around
the
close
point,
ing. At
a claim construction
court entered
needle.
the used
Am.
JMS N.
Corp. v. JMS
DSU Med.
PTY,
Corp.
Nos. C-00-1826
Corp., & ITL
supply
medical
large Japanese
ais
5,
(N.D.Cal.
DLJ,
Feb.
C-99-2690-DLJ
the
competes with MDS
business
Order).
2001) (Claim
This
Construction
in June
Beginning
market.
United States
without
claim construction
court
1999,
Platypus needle
reviews
purchased
v. Westview Instru
ITL,
agree-
deference. Markman
into an
entering
guards from
(en
(Fed.Cir.1995)
Inc.,
ments,
967
the
worldwide
ment
distribute
370, 116 S.Ct.
banc), aff'd, 517 U.S.
Sup-
(the
Under
Agreement).
Supply
(1996).
of a
claims
“[T]he
L.Ed.2d 577
134
bought open-shell
Agreement, JMS
ply
which
invention to
define
from
guard units
configuration Platypus
patentee
right
is entitled the
to exclude.” 11.
specification
8-9. The
reinforces that
Phillips
AWH
suggestion:
F.3d
(Fed.Cir.2005) (citing
Vitronics
guard is
hinge
[T]he
folded about its
Inc.,
Conceptronic,
position and
...
generally
locked
into a
(Fed.Cir.1996) (“We look to the
words
cylindrical,
configuration.
folded
Alter-
claims themselves
to define the
natively,
guard may
be molded ...
invention”)).
patented
scope
This
sliding
enclose a
assembly
hub/needle
recently
predominant
enunciated
that has
positioned
been
between the
claim
principles
Phillips.
construction
pieces.
two
Again, the trial court read the claim to A guard slidably enclosing require substantially that the guard con- sliding assembly ... guard said com- tain needle-assembly at all times. prising ... Order, slip op. Claim Construction In9. place, expressly
the first claim recites a hollow proportioned member for re- *8 presence the of a as part ceiving needle of the winged said needle and needle Thus, sliding assembly. hub, the claimed “as- said defining hollow member at sembly” complete would be not without a longitudinal least one proportioned slot needle. claim The also uses the term “en- to receive a of wing said needle hub closing.” In the of context an invention projecting outwardly through the slot “for a locking position in a needle shielded within when the needle hub resides the as patient,” the needle is removed from a hollow member in sliding relation there- to, means, that language suggests shielding constant associated with the hol- or covering sharp. 2, member, patent, of the ’311 col. low for engaging said wing 12, 20, 19, granted summary judg- 1. The a 22-23 of the '311 and on 1, 4-9, 1, 6, non-infringement ment of on claims patent. claims and 7 of the ’072 I, op. If limits the slip the Order at 19. “slot” slot when through said projecting opening to accommodate the size of the slidingly in retract- hub needle and are the patent’s “minor” thickness of ’311 is en- in the needle position which ed infringe not be- wings, Platypus the would locking member by the closed hollow any jaws accommodate thickness. cause re- hub needle said said needle Order, slip op. at 19. Claim Construction position. tracted hand, if no On the “slot” contains other 20, (emphases 11. 20-39 patent, col. ’311 limitation, the would thickness added). Claim is: infringe opens wing it because receive of claim 46 which guard 52. The Id., any at 19. size. di- in a longitudinal said slot extends only “slot.” language The claim recites of said hollow through one end rection Thus, incorporate itself not the claim does member, provide sliding access Moreover, any the thickness limitation. wing. said provided no limitation on specification size (emphasis 11. 63-65 patent, col. ’311 complete In a tribute to its opening. the added). term trial court held that the The beyond went those analysis, the trial court width.” Claim require not “a defined did prose- the primary also consult sources 19. Later slip op. at Construction at history. Phillips, 415 F.3d cution court, request of defen at the the district (a patent’s also the court “should consider “ ‘[sjlot’ dants, ‘an shall mean clarified evidence”). it history, if is prosecution capable receiving a guard opening record before the Patent Office shows through the opening wing projects patentees that the amended claims edge and a having upper both an 252,564, Number which Application Serial by the sidewall edge that are defined lower pat- from which the ’311 application ” Corp. v. JMS guard.’ DSU Med. (and derived, to patent) ’072 avoid U.S. ent PTY, Co., Corp. Corp., Am. & ITL JMS N. Patent). 4,840,619(Hughes Patent No. C-00-1826-DLJ, C-99-2690-DLJ Nos. In the claims to avoid the amending (Construction 2001) (N.D.Cal. Apr. Patent, however, did Hughes applicant I). In claim be Order Clarification slot, argued by as not limit the size to receive” modifies “proportioned cause ITL. The amendments concerned JMS and “slot,” that “slot” explained the trial court wings only the orientation of the needle wing to the so mean ‘sized relative “shall through and forth that moved back slot wing through extends Patent, Hughes distinguish To slot. the hollow member the hub is within when to, did not did not have patentee slot can accommodate the and so said Thus, actually, limit width the slot. it wing’s movement as translates correctly “slot” as trial court construed ” Id.; length of the slot.’ see also width, long as requiring a defined Corp. JMS N. Am. Med. v. JMS receiving wing. capable of Con- was PTY, Nos. C-00-1826 & I, slip op. Order struction Clarification (N.D. 14., DLJ, C-99-2690-DLJ, slip op. at 29 2002) (Construction Jan Cal. Clarifica construction, the trial this claim Under Order).
tion II & SJ *9 law, every “as a matter of court found that identified the crux of the The trial court that there is a jury would find reasonable dispute over “slot” “whether the configu- [Platypus] in closed-shell slot the have defined wings for the should II & slots ration.” Construction Clarification Therefore, wings’ the closely slip op. the at 29. approximating widths SJ in the trial court held that when sold Unit- thickness.” Construction Clarification in configura- ed States its “closed-shell” A.
tion, Platypus literally the infringed claims appeal, On argues DSU that ITL com- 46-47, 49, and 52-53 of ’311 when mitted contributory Ac- infringement. tubing the of closed over a needle-set. Id. DSU, cording to Platypus, ITL which JMS, sold to had no substantial noninfring-
Viewing
in
light
the evidence
Therefore,
ing use.
argues,
ITL
nonmoving
most favorable to the
party,
contributory infringement
committed
as a
this court
that
holds
court cor
responds
matter
law. ITL
that it made
rectly concluded that the closed-shell con
and sold “most Platypus guards”
outside
figuration
Platypus
does have a slot.
ITL
United States.
also contends that
applied to
Platypus,
As
its slot is an
the record contains no evidence that the
opening
guard
in a
capable
needle
of re
Platypus
used in an was
ceiving wing
projects
manner
through
in
Further,
the United States.
opening.
the slot has both an
upper edge
edge
and a lower
defined
Platypus
The
sets
came into the
guard.
The Platypus’s
sidewall
fall
United
within three categories:
States
wing
slot
also sized relative to the
(1)
imported
JMS
into the United
wing
can accommodate the needle
as it
approximately
States
Platypus
30 million
through
moves
length
the slot.
that,
guards
prior to importation into
Furthermore,
Platypus
contains the
States,
the United
it
already
had
assem-
46-47,
other limitations of claims
bled into the
configuration,
closed-shell
Therefore,
52-53 of
patent.
the ’311
in'its
combined with needle sets. These units
configuration,
Platypus
closed-shell
majority
accounted for the
Platy-
vast
46-47, 49,
infringe
does
claims
and 52-53
pus sales in the United States.
patent.
of the ’311
This court affirms the
(2)
purchased
Fresenius
approximately
summary judgment
trial court’s
ruling.
3.5 million Platypus guards,
open-
in the
configuration
shell
without needle sets.
III.
ITL
shipments
billed JMS for the
jury
found that JMS North
shipped
them
Fresenius
United
directly
America and
and contribu
request.
States at JMS’s
ul-
Fresenius
torily infringed, and that
additionally
timately decided that guards without
induced JMS North America to infringe.
needle
did
regula-
sets
not meet FDA
However,
Transcript,
tions,
returned about 3 million.
returned
of non-infringement
a verdict
(3)
15,000
ITL
approximately
sent
Pla-
Id.,
favor of ITL.
at 453-54. The jury
typus
open-shell
in the
configuration to
finding
entered a verdict
that ITL did not
JMS in San Francisco. DSU introduced
engage
contributory infringement
or in
no
evidence
those units
ever
were
Id.,
infringe.
ducement to
at 453. The
put into
configuration
the closed-shell
trial court denied DSU’s motion for new
the United States.
jury’s
trial on the
verdict that ITL did not
Additionally, the record contained evidence
contributorily infringe or induce infringe
by JMS,
that when instructed to do so
ment. This
court reviews
denial of a
ship
guard
would
Platypus
units F.O.B.
motion for new trial
a jury
after
trial for
into the United States. The record also
an abuse of
discretion. Chiron
shows, however,
only
that ITL
sold the
Genentech, Inc.,
(Fed.
open-shell configuration.
in its
Cir.2004) (citing De Saracho v. Custom
Mach., Inc.,
(9th
Therefore,
Food
this court must deter
Cir.2000)).
jury’s
mine whether the
against
verdict is
*10
applied
properly
The trial court
these
Under
of the
weight
evidence.
the clear
legal
The trial court deter
principles.
271(c):
§
ITL
that
the record showed that
mined
within
to sell or sells
offers
[w]hoever
Platypus,
Platypus
that
the
supplied the
component
a
of a
States
the United
non-infringing
had
uses in
no substantial
manufacture,
machine,
combi-
patented
and that ITL
configuration,
its closed-shell
constituting a
composition ...
or
nation
to
result
Platypus
intended make the
that
invention, knowing
of the
part
material
in
contributory
in the
for
potential
ed
espe-
made
especially
be
or
same to
the
product designed
a
for use
fringement as
in
infringement
for use
an
cially adapted
in
Med.
patented
combination. DSU
staple
article
a
patent,
of such
Corp.,
N. Am.
&
Corp. v. JMS
suitable
commodity of commerce
or
for
PTY,
C-00-1826-DLJ, C-
ITL
Nos.
use, shall be
noninfringing
substantial
(N.D.Cal.
99-2690-DLJ, slip
at
op.
1-3
contributory infringer.
as a
liable
2004) (Post
Sept.
Trial Motions’ Or
271(c) (2000)
add-
(emphases
§
35 U.S.C.
der).
fact,
beyond the minimal
In
even
271(c),
ed).
§
discussing U.S.C.
In
contributory in
requirement
for
intent
Court stated:
Supreme
knowledge
ITL
with the
fringement,
acted
which
and sells articles
who makes
One
knowledge
’311
that the
of the
patent-
in
only adapted to be used
are
or
especially
adapted
made
component was
in-
presumed
will be
ed combination
Id.,
slip
manner.
for use
an
consequences of his
natural
tend the
However,
court
op.
22-24.
the district
acts;
that
be
to intend
presumed
he will
trial
the motion for
new
because
denied
of
in the combination
they shall be used
alleged
not show that “the
record does
patent.
act
a direct nexus
contributory
ha[d]
Studios,
Inc. v.
Metro-Goldwyn-Mayer
Id.,
infringement.”
specific act of direct
Grokster, Ltd.,
913, 125 S.Ct.
545 U.S.
trial,
In
slip op.
denying
at 25.
new
(2005).
In
2764, 2777,
ration in not in the context of in induced 271(c) in the States. Section has a United fringement, required “the intent requiring contributory limitation territorial the specific [infringement] induce acts of in the United Fur- acts to occur States. additionally or an infringement.” cause thermore, jury cannot this court reverse Materials, MEMC Elec. Inc. v. Mitsubishi non-infringement verdict of on mere infer- 1369, Materials Silicon 420 F.3d Platypus guard units in ences that sold (Fed.Cir.2005) 4 1378 n. (citing MercEx (i.e., open-shell the United States con- Inc., change, eBay, L.L.C. 401 F.3d above) 2 categories 3, in figuration and (Fed.Cir.2005)). 1323, 1332 This section put were into the closed-shell requirement that by clarifies intent hold configuration. The record does show that, ing en banc was stated Manville guards ITL Platypus shipped that the into Corp. Inc., Sales v. Paramount Systems, open-shell config- United States (Fed.Cir.1990), 917 F.2d “[t]he put uration were ever into an infringing plaintiff has the burden of showing that i.e., configuration, catego- closed-shell. On the alleged infringer’s in actions induced 3, above, ries the record no contains fringing acts and that he knew or should i.e., infringement, evidence of direct have known his actions would induce actu open-shell guards imported infringements.” al The requirement by ITL or were sold used their closed- alleged infringer knew or should have result, configuration. shell As a the trial known his actions would induce in actual deny- court did not abuse its discretion fringement necessarily includes the re ing motion for new DSU’s trial on ITL’s quirement that he or she knew of the contributory infringement. Blount, patent. See Golden Inc. v. Robert On issue of infringement, induced H. Peterson 438 F.3d 1364 n. 4 argues infringe- induced (Fed.Cir.2006) (citing Manville and ex by inducing ment sell closed- plaining that the inducing infringement configuration shell in the United States. standard was satisfied “because is undis The district court denied DSU’s motion for puted that alleged infringer] [the had no that, a new ground although trial on the tice of patent”). directly infringed, ITL did not intend infringe. JMS to DSU claims the district court
B. improperly jury instructed the on the state necessary of mind to prove inducement to RESOLUTION OF CONFLICTING 271(b). infringe § under 35 U.S.C. This PRECEDENT court legal sufficiency reviews the jury B., III. only, Section instructions on an issue law with considered en banc. out deference to the district court. Ad Opinion for Display Sys., filed Circuit vanced Inc. v. Kent State NEWMAN, Judge RADER, Univ., with (Fed.Cir.2000). LOURIE, SCHALL, BRYSON, “This Court reviews instructions in GAJARSA, LINN, PROST, DYK, entirety their ‘only orders new trial MOORE, Judges, join. Circuit when errors in the instructions as a whole ” Concurring opinion by MICHEL, filed clearly jury.’ Chiron, mislead the MAYER, Judge, Chief Judge. Circuit F.3d at (quoting Delta-X Tools, Inc., Hughes Baker
This court Part Prod. addresses III. B., opinion (Fed.Cir.1993)). en this banc. This section
1305
States,
271(b),
infringement does not
induced
“[who
Under section
any activity by the
in-
require
a
indirect
infringement of
actively induces
ever
country,
long
in
as
as the
fringer
this
infringer.” 35
as an
shall be liable
infringement
direct
occurs here.
271(b).
un
liability
§
establish
To
U.S.C.
271(b),
must
patent holder
a
der section
Thus,
Transcript,
at 432.
the court
of
knew
once the defendants
prove that
in
accordance with Man-
charged the
“actively
knowingly
they
not define whether
ville. The statute does
in
another’s direct
abett[ed]
aid[ed]
in-
purported infringer
must intend to
Technologies
fringement.” Water
infringement
pur-
or whether the
duce
(Fed.Cir.
Calco, Ltd.,
F.2d
668
850
merely
to
infringer
intend
ported
must
However,
1988)
original).
(emphasis in
infringe-
in the
that induce the
engage
acts
alleged to
of the acts
consti
“knowledge
it knows it is
regardless
ment
of whether
enough.
Warn
infringement” is
tute
to
causing
infringe.
another
DSU com-
F.3d
316
Apotex
er-Lambert Co.
that the instruction is incorrect be-
plains
(citation
(Fed.Cir.2003)
omit
1363
requires
possess
that the inducer
cause
ted).
knowledge
possible
“mere
of
The
in-
specific
encourage
intent
to
another’s
to
amount
infringement by others does not
merely that the induc-
fringement, and not
to
inducement;
intent and action
specific
alleged
of the
to
knowledge
er had
acts
Id.
infringement
proven.”
must be
induce
infringement.2
constitute
554).
Manville,
F.2d at
(citing
917
Grokster,
copy
In
which was
case,
Supreme
cited with
right
Court
the court to
DSU asked
instruct
approval
this court’s decision Water
with
purportedly
accordance
jury,
it discussed induce
Technologies when
Lomb,
Bausch &
Co. v.
Hewlett-Packard
infringement, stating:
ment of
(Fed.Cir.1990),
to
Inc.,
that
F.2d 1464
infringe-
The rule on inducement
only
infringement, the inducer need
induce
early
is
developed
cases
ment as
party
the third
the acts of
intend to cause
of “ac-
today.
no different
Evidence
The
infringement.
direct
that constitute
encourage di-
steps ...
taken to
tive
to
gave
following
instruction
trial court
advertising
such as
infringement,”
rect
jury:
to
instructing
use or
how
infringing
an
infringement,
induce
there
In order to
use,
an
infringing
show
engage
an
infringe-
an
must first be
act of direct
product
be
affirmative intent
that
the defendant
proof
ment and
showing
infringe, and a
used to
infringement with
knowingly induced
infringement
encouraged
was
over-
infringe-
encourage
the intent
to
lia-
to find
comes the law’s reluctance
must have intend-
ment.
defendant
bility
merely sells
when a defendant
the acts that constitute
ed
cause
suitable for some
product
commercial
have
infringement
and must
direct
lawful use.
known than[sic]
known or should have
(citation
Grokster,
in-
at 2779
direct
S.Ct.
its action would cause the
omitted).
result,
entity
if an
As a
infringement,
footnote
fringement. Unlike direct
object
promot-
with the
product
place
take
within the United
offers
which must
Lomb,
infringement.''
as
DSU reads this statement
Co. v.
&
In Hewlett-Packard
Bausch
Inc.,
(Fed.Cir.1990),
proof
in-
standing
proposition that
for the
F.2d
this
is
to cause
acts
all that
"[p]roof
intent to
tent
of actual
stated
required
inducement
in order
establish
which constitute
cause the acts
infringement.
finding
necessary prerequisite to
active
ais
ing
infringe,
its use
shown
clear
knowledge,
threshold
the inducer must
expression
steps
or other affirmative
taken
an
have
affirmative intent to cause direct
infringement,
foster
it is then liable for
infringement.
In
the words
a recent
“
infringement by
resulting
acts
decision,
third
requires
inducement
‘that the
parties.
at 2780. “The
Id.
inducement
*13
alleged infringer knowingly induced in
liability
premises
rule ...
on purposeful,
fringement
possessed specific
intent to
”
culpable expression and conduct ....” Id.
encourage
another’s
infringement.’
Elec.,
(Fed.Cir.
MEMC
IV. an licensee MDS became exclusive DSU, thus, it the date on which would finding on a that MDS became Based collect dam on be entitled to exclusive licensee of ’311 17, The trial court ages, July 17, 2001, jury lost was July awarded MDS make this jury determina in the amount allowed damages profit tion, an became $4,400,000. instructing It that MDS Transcript, at 455. also patent some- of the ’311 reasonably royalty for exclusive licensee awarded DSU July 17, April time between and the WingEater acceptable was an non- evidence supports 2001. Substantial patented substitute for reject jury’s any decision to contract be- products. Id. July 17, DSU earlier MDS and than tween Although reviewing district determine, 2001. The was free to ” court’s ruling “Daubert to exclude testi
instance, Utterberg’s testimony Mr. mony discretion, for an abuse of this court simply not point on this was credible. Mr. eligibility profits damages reviews for lost he testified that “shook Utterberg hands Chem., without deference. Micro 317 F.3d an presi- with himself’ on earlier date-as (decision testimony to admit expert sole contracting dent and owner both law); reviewed regional under circuit Gen parties. slip Post Trial Motions entech, Inc., Amgen, Inc. v. times, however, op. at 56-57. At other he (Fed.Cir.2002) (Ninth Circuit reviews also contradicted himself undermined evidentiary discretion); rulings for abuse of suggestion contract was entered Rite-Hite July Kelley into than 2001. Id. at 57. earlier (Fed.Cir.1995) Thus, (whether trial court did not abuse its the lost in denying profits legally compensable discretion a new trial on are ques is a *15 novo). date of the contract. tion law this court reviews de above, As noted the trial court reasoned B. that MDS “cannot be awarded lost profit The trial court excluded testimony damages upon any based de- sale the witness, expert Stephen from DSU’s Dr. fendant of the noninfringing WingEater Degnan, hypothetical on “the A. existence guard.” needle In Limine 296 hypothetical or of a terms contract be F.Supp.2d at 1156. It also reasoned that tween and Fresenius [MDS] [and] as Degnan’s proffered Dr. methodology, “re- any patent or to calculation measure of quiring hypothesized inter alia in terms damages infringement upon any based sale contracts, hypothesized grounded is not on WingEater guard.” of the needle legal principle established and is far too Co., Med. v. Corp. F.Supp.2d JMS factually remote to be within the line (In (N.D.Cal.2003) 1140, 1159 Limine Or for legally compensable patent inju- drawn ). DSU, According infringe der to JMS’s ries.” Id. Specifically, the trial court fault- ment “decade-long” interfered with MDS’s ed Dr. Degnan’s “accelerated market en- relationship contractual with Fresenius. try” notion that captured MDS have would Specifically, contended that MDS the market in advance of the introduction infringing Platypus guard used of the sales of WingEater, the but for the infringing Fresenius, to “steal” with the contract with sales the Platypus. Id. at 1151. replace the intent later MDS, however, argues also non-infringing WingEat with its foreseeability Thus, principle sought profit sup- er. lost dam Rite-Hite MDS ports profits for on only case lost ages, not for the award it Win- received gEater. it may possible from lost While be an infringing Platypus, sales to for foreseeable, but also for it lost have non-infring sales compensable, therefore ing WingEater, The trial court effect on disallowed future contracts, Degnan’s testimony subject Dr. on this court was correct acceptable perceive because that it noninfringing “sales could not occur when the products [could substitute be the non-infring- not] basis future contract was itself for a legally compensable damages,” ing substitute. In Processing Corp. Grain V. Maize-Prods. v. American (Fed.Cir.1999), this court observed The trial court denied JMS’s and acceptable an non- sales of that “[m]arket Judgment motions for as Matter of ITL’s alone to (JMOL) often suffice infringing substitute contesting Law million $4.4 Id. at 1352. profits.” support for lost award for lack of with substantial defeat a case Order, slip Post Trial Motions evidence. as in Processing, this Indeed Grain 55. This op. at court reviews a trial case, that de- noninfringing substitute rulings court’s after a verdict JMOL profits yet for not the claim lost was feated by reapplying the district court’s own stan Id. at marketplace. offered sale Applied Res. dard. Med. United Here, Degnan admitted that 1354-55. Dr. Surgical States F.3d WingEater was available October (Fed.Cir.1998). appeal, To on prevail WingEat- FDA approved and the evi and ITL show substantial must Thus, Dr. sale on June er for jury’s not factual support dence does consider the effect Degnan’s failure to findings or that the trial court erred in availability WingEater supports of the law on Per applying the JMOL motions. hypotheti- exclusion of the the trial court’s Corp. Computervision Corp., kin-Elmer theory. cal contract (Fed.Cir.1984). jury’s This court sustains addition, Processing In Grain damages award of “unless amount is as well: “To proposition stands for another monstrous, grossly clearly or excessive lapsing hypothetical from into prevent the evidence, only supported by the or based requires sound pure speculation, this guesswork.” on or Biotec speculation *16 of proof of the nature the market economic Biologische Naturverpackungen GmbH & likely infringement with out outcomes 1341, Inc., 249 F.3d 1355 Biocorp, Co. v. Indeed, F.3d at 1350. picture.” of 185 the (Fed.Cir.2001). jury The was accorded proof economic re concept the of sound in conflicts the evi discretion to resolve in quires grounding “sound economic some v. damages. dence of Brooktree Ad v. Ex predicates.” and factual Riles Shell Devices, Inc., 1555, 977 F.2d vanced Micro 1302, 298 1311 Prod. F.3d ploration & (Fed.Cir.1992). Moreover, this (Fed.Cir.2002). perceived trial court The amount “any will doubts about the resolve ground not “accel Degnan Dr. did his that infringer.” the Kalman v. against in entry” theory sound eco (Fed. erated market 1473, Berlyn Corp., perceived trial court principle. Cir.1990) nomic The v. Ryco, Ag-Bag Inc. (quoting (Fed.Cir.1988)). hy heavily 1418, on Degnan that Dr. relied too Corp., 857 F.2d mar hypothesized pothesized contracts attempt question In an to ground that lacked sound economic kets verdict, attempts to jury’s profits lost ing. analysis invariably damages While numer the market included suggest that of a hypothetical reconstruction involves to the noninfringing ous other alternatives marketplace, for” that reconstruction “but Nevertheless, jury Platypus. awarded footing some economic must include April beginning lost profits MDS trial court found lack principle, which the acknowledged bring that it could not Thus, no ing. this court detects abuse of by that guarded needle to the market in the trial court’s exclusion of that, discretion a result acknowledged date. JMS Degnan’s testimony profits Dr. on lost own inability bring guarded to its date, MDS could to market needle damages. multi-year with tie-up customers Master- for admitting testimony of Mr. Timo Thus, Guard contracts. even though thy question Erskine on the of obviousness approved WingEater FDA for sale of the ’311 for patent, admitting evidence replaced any June it could not have the prosecution history about of the relat invention, patented according sales ed ’072 and for excluding evidence admission, to JMS’s own until its first of ITL’s insurance commercial sale in October 2001. Fur- from the consideration of The willfulness. thermore, provided DSU no evidence that Ninth regarding Circuit reviews “decisions non-infringing other alternatives ac- were admission of evidence abuse discre ceptable during necessary time peri- tion,” Indus., Inc., Rogers Raymark Corporation Though Nipro ods. Medical (9th Cir.1991) 1426, 1429 (citing F.2d Daily guarded distributed a needle set called the Munro, Co. Herald “SafeToueh,” design it had flaws that led (9th Cir.1988)). This no court detects recalls, to FDA-published prior two any abuse discretion in rulings. these recall, it geographical had limited distribu- unsatisfactory tion and manufacturing ca- also jury’s asserts that the distributed, Though pacity. Diasol Inc. in verdict, finding claims 46-47 and 50-52 States, guarded set United needle obvious, against great weight of the “Shelly,” independent rating called the an However, lengthy evidence. trial rec agency (Emergency Care Insi- Research prior ord showed art all contained tute)4 “Shelly” called Diasol’s “unaccepta- 46-47, elements of claims 50-52 of the ’311 op. ble.” In slip Limine at 16. patent. This record includes: the testimo “Shelly” also record shows ny Erskine; of Mr. United States Patent only very quantities, sold small was 4,935,012 No. (Magre patent) and United available distributors like Fresenius. 3,572,334, States Patent No. which disclose Thus, substantial evidence supports the every patent’s element of ’311 claims profits award for lost due lost sales 50-51; Magre patent and United infringing Platypus guard. Fur- 3,463,152, States Patent No. which disclose ther, this perceive court does not that the every patent’s element ’311 claims 46-47 *17 jury grossly is award excessive or mon- 50; patent and Magre United strous, only or speculation based on or 4,170,933, States Patent No. which disclose guesswork. every 46; element of claim Magre and the Hughes patent, and the which dis
VI. every close element of claims 46-47 and The 52. record also appeals DSU also all showed evidence denial of of its adequate motivation to motions for new trial on trial combine these ref various to evidentiary rulings. court’s Post Trial erences reach a decision obviousness. addition, slip at In op. jury Motions’ 3-4. DSU adequate heard evi variety objective based its on a of alleged motions dence on the indicia of non-obvi result, in admitting errors or excluding evidence. ousness. As a substantial evidence instance, For DSU faults the supports district court the obviousness verdict. The tri- 4. Emergency years. Care Research Institute is a for over 30 It has been called the non-profit agency health services research Reports “Consumer for medical devices” and providing that has been information tech- "preeminent source for healthcare risk community nical assistance to the healthcare management information and advice.” support patient safe and cost-effective care full court. no need intervention a new trial on this denied properly al court rare should reserved Such intervention be well. basis as excep- for real conflicts as well as cases of appeals the trial court’s DSU also importance. R.App. Fed. P. tional See jury dur from response question 35(a). panel In our was free opinion, During delibera ing jury deliberations. correctly to conclude that the district court on tions, a clarification jury requested rejected jury proffered DSU’s instruction Transcript, jury instruction. hindsight because, misunderstanding Hewlett-Pack- 14984-85, ard, correctly not state the law. DSU did by referring jury back responded Moreover, write to make clear that we invalidity. on Id. at instructions not set standard here as we do forth new parties had earlier 15019. Both “knowledge of the to what satisfies Thus, the tri those instructions. accepted brought in cases un patent” requirement “wide discretion” al court did not abuse its 271(b). See, § e.g., der U.S.C. Insit jury question. Arizona responding Inc., Techs., v. Inc. Cat Contr. (9th Johnson, Cir. F.3d uform (Fed.Cir.1998) (analyzing F.3d 2003). 271(b) liability under actual section both standards). knowledge and constructive- VII. dispute Corporation is no There conclusion, the trial this court affirms In Ltd., Pty, knowledge actual of United had judgment of non- summary grant court’s 5,112,311. Accordingly, Patent No. States the combination claims infringement on “knowledge patent” of the issue (combination assem- guard and needle us. before open-shell configuration of bly) and on the This court affirms the stand-alone claims. evidentiary rulings. This
the trial court’s affirms the trial court’s denial
court also motions, affirming en- post-trial
all of the judgment entirety.
try of the final
COSTS W, INC., Plaintiff-Appellant, L & bear its own costs. party Each shall AFFIRMED SHERTECH, INC. Steven MAYER, MICHEL, Judge, Chief Sheridan, Defendants- W. *18 Judge, concurring. Circuit Appellants. Cross with the court’s anal- Although agree we 06-1065, 06-1097. Nos. III.B, we do consider ysis Section en banc. necessary to address this issue of Appeals, Court United States if Hewlett-Packard as we DSU misreads Federal Circuit. intent to cause “proof
had said of actual 14, Dec. which constitute acts necessary prerequisite is a and sufficient inducement,” we did finding active but is no actual conflict between
not. There and, thus, and Manville
Hewlett-Packard