Blog May 10, 2022
Minnesota Patent Litigation Wrap-Up: Q4 2022
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This post continues our summary of substantive orders in patent litigation in the District of Minnesota. This summary includes voluntary dismissal of claims, declaratory judgment jurisdiction, and claim construction.
Corning, Inc. v. Wilson Wolf Mfg. Corp., Civil No. 20-700 (DWF/TNL), 2022 WL 16719113 (D. Minn. Nov. 4, 2022)
Plaintiff Corning sued defendants Wilson Wolf Manufacturing and John R. Wilson, CEO of Wolf Wilson (collectively, “Wilson”), seeking declaratory judgment of non-infringement and invalidity for certain patents related to cell culture vessels. 2022 WL 16719113, at *1. The declaratory judgment action was filed to resolve allegations of infringement by Wilson against several of Corning’s customers who purchased the accused HYPERStack cell culture vessels. Id. at *2. One issue was Count Ten of Corning’s complaint, which alleged that its customers were immunized from infringement under the safe harbor defense, 35 U.S.C. § 271(e). Id. at *2-3. Wilson sought discovery on Corning’s safe harbor claim, and Corning subsequently approached Wilson about dismissing that claim. Id. at *3. At the time, Wilson complained to Corning that the parties with the best information on how and why they cultured cells using Corning’s product – Corning’s customers – were not parties to the declaratory judgment action and were resisting Wilson’s subpoenas. Id. Corning then moved to dismiss the safe harbor claim without prejudice and Wilson sought dismissal of the complaint in its entirety for lack of standing. Id.
Judge Frank began with Corning’s voluntary dismissal, noting that Fed. R. Civ. P. 41(a)(1) and (2) only allow for voluntary dismissal of a claim by court order if an answer has been served. Id. at *4. This limit in Rule 41(a) is to prevent prejudice to the opposing party. Id. But if the only prejudice is “that resulting from a subsequent lawsuit,” then courts will generally grant dismissal. Id. (quoting Metro Fed. Bank of Iowa, F.S.B. v. W.R. Grace & Co., 793 F.Supp. 205, 206 (D. Minn. 1992)). Corning argued that because the safe harbor defense turns on facts unique to each individual customer, litigating that defense was better left to the separate litigation Wilson brought against those customers. Id. Corning maintained that Wilson would not be prejudiced by dismissal because this case was in its early stages and Wilson had already sued the customers in a separate lawsuit where the safe harbor defense had been raised. Id. Wilson countered that Corning’s dismissal was a problem of its own making by bringing that claim in the first place, and that Wilson did not oppose dismissal of the claim, but wanted dismissal with prejudice or reimbursement for costs and fees associated with discovery for the safe harbor defense. Id. at *5.
Judge Frank granted Corning’s request for voluntary dismissal without prejudice, but reserved the right to have Corning reimburse Wilson for costs and fees if, for example, “any work done by [Wilson] in this action be irrelevant in subsequent litigation because of the ultimate merits decision in this case.” Id.
On Wilson’s motion to dismiss the entire complaint for lack of standing, it argued that there was no real or substantial controversy with Corning because Wilson had sued Corning’s customers, not Corning itself, for infringement. Id. In particular, Wilson pointed out that Corning lacked standing on the asserted methods patents because only Corning’s customers practiced those claims. Corning responded that there were common issues between itself and its customers related to infringement and validity of the asserted patents, and that Wilson had previously asserted the patents-in-suit against Corning in a 2013 lawsuit. Id. Corning also noted that Wilson had relied on Corning’s instructions for its HYPERStack products to support the infringement claims against its customers. Id.
Judge Frank began by noting that the Declaratory Judgment Act, 28 U.S.C. § 2201(a), has the same case or controversy requirement as Article III of the U.S. Constitution. Id. at *6. He explained that a supplier can have declaratory judgment jurisdiction if “(a) the supplier is obligated to indemnify its customers from infringement liability or (b) there is a controversy between the patentee and the supplier as to the supplier’s liability for induced or contributory infringement based on the alleged acts of direct infringement by its customers.” Id. (quoting Arris Grp., Inc. v. British Telecomm’s PLC, 639 F.3d 1368, 1375 (Fed. Cir. 2011)).
Judge Frank identified that Wilson had expressly stated in an earlier letter that it would be bringing a standalone lawsuit over the patents against Corning based on its customers’ use of HYPERStack. Id. Notably, this letter was purportedly sent as a settlement communication related to the 2013 lawsuit, but Judge Frank found that it could be properly considered under Fed. R. Evid. 408(a), because that rule prohibits the use of settlement communications only “to prove or disprove the validity” of a claim or to impeach a witness, and neither applied here. Id. Wilson had also repeatedly referenced Corning’s HYPERStack products in the lawsuit against its customers and relied on Corning’s instructions to customers on how to use the products for Wilson’s infringement claims, including in its infringement contentions. Id. Judge Frank further found that Wilson had implicitly asserted that “Corning is liable for indirect, induced, or contributory infringement,” which could also give rise to declaratory judgment jurisdiction. Id. (citing Arris Grp., 639 F.3d at 1375). Corning also alleged it was obligated to indemnify several customers against infringement claims involving HYPERStack, which also can give rise to declaratory judgment jurisdiction. Id. at *7.
Accordingly, Corning had shown that an actual controversy existed between itself and Wilson concerning the patents-in-suit, and Judge Frank denied Wilson’s motion to dismiss the declaratory judgment action. Id.
Vascular Sols., LLC v. Medtronic, Inc., Case No. 19-cv-1760 (PJS/TNL), 2022 WL 17959845 (D. Minn. Dec. 27, 2022)
Plaintiffs Vascular Solutions, LLC, Teleflex, LLC, Teleflex Life Sciences Limited, and Arrow International, LLC (collectively, “Teleflex”), sued Medtronic alleging that its Telescope catheter infringes Teleflex’s patents related to guide-extension catheters used in interventional-cardiology procedures. 2022 WL 17959845, at *1. At issue were claim constructions for several disputed claim terms. Id.
First was the term “substantially rigid portion/segment.” Id. at *2. Judge Schiltz began by noting that the parties struggled to come up with a viable construction of this term, so he appointed an expert to assist with construction and deferred construction until after receiving the expert’s report. Id.
Second was the term “reinforced portion/segment,” in which the parties disputed the manner of reinforcement. Id. Medtronic argued that the patent specifications describe an embodiment as having a “braid or coil” reinforcement, and thus the claim should be construed to require such a particular reinforcement. Id. Judge Schiltz explained, however, that claims should generally not be construed to be limited to embodiments described in the specification. Id. (citing Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en banc)). And certain claims of the patents expressly required that the reinforcement be a braided or coiled material, which would render the term “reinforced” to be superfluous under Medtronic’s construction. Id. Judge Schiltz thus rejected Medtronic’s proposed construction and agreed with Teleflex that no additional construction of that term was required. Id.
The third term in dispute was “flexible tip portion/segment.” Id. Medtronic, citing the specification, sought a construction that the flexible portion “have no reinforcement whatsoever.” Id. But Judge Schiltz noted that this was inconsistent with certain claim language. In particular, one independent claim was directed to “a flexible tip portion defining a tubular structure,” while a dependent claim was directed to the tubular structure having a “flexible cylindrical reinforced portion proximal to the flexible distal tip portion.” Id. That is, using claim differentiation, the flexible tip portion can include reinforcement. Id. Judge Schiltz again rejected Medtronic’s proposed construction and agreed with Teleflex that no further construction was required. Id. at *3.
The fourth disputed group of terms concerned comparisons of rigidity. Id. For example, one claim was directed to a “segment defining [a] partially cylindrical opening . . . formed from a material having a greater flexural modulus than a flexural modulus of the tubular structure.” Id. Medtronic argued that these claims were indefinite because they compared a material without form to a structure that has form, which Medtronic asserted was not possible. Id. Judge Schiltz agreed with Medtronic that the claims were comparing a material to a structure. Id. He also noted that Teleflex and its expert argued inconsistently with one another that the claims required structure-to-structure, material-to-material, and material-to-structure comparisons. Id. at *3-4. Judge Schiltz concluded, however, that there appeared to be a factual dispute as to whether the material’s flexibility could be determined independent of shape, and so he deferred ruling on indefiniteness until the summary judgment stage. Id. at *4.
The fifth term in dispute was “second artery,” in which Medtronic argued that the claim did not describe “the second artery” until a subordinate clause, rendering the claim indefinite for lack of antecedent basis. Id. at *5. Judge Schiltz agreed with Teleflex, however, that the claim first described two arteries: “a first artery” and “a branch artery.” Id. This “branch artery” was the antecedent of “the second artery” because the claim described extending the catheter from the first artery into the branch artery. Id. Judge Schiltz therefore concluded that the term “second artery” had an antecedent basis and was not indefinite. Id.
The final disputed term was “coaxial lumen/coaxial guide catheter.” Medtronic’s proposed construction would have the “guide extension catheter sharing the same axis as the standard guide catheter,” while Teleflex proposed that no construction was required. Id. Teleflex was particularly concerned that Medtronic’s construction would require mathematical precision as to whether the catheters shared the same axis, giving rise to a non-infringement defense. Id. But Medtronic agreed that “coaxial” did not require mathematical precision, and so Judge Schiltz found no real dispute over the term and adopted Medtronic’s proposed construction. Id. He noted, however, that if this construction gave rise to a “concrete dispute” at a later point concerning whether the limitation is met, he would address it then. Id.
The opinions expressed are those of the authors on the date noted above and do not necessarily reflect the views of Fish & Richardson P.C., any other of its lawyers, its clients, or any of its or their respective affiliates. This post is for general information purposes only and is not intended to be and should not be taken as legal advice. No attorney-client relationship is formed.
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