Am. Med. Sys. Inc v. Laser Peripherals LLC

712 F.Supp.2d 885

AMERICAN MEDICAL SYSTEMS, INC., and Laserscope, Plaintiffs,v.LASER PERIPHERALS, LLC, Defendant.

Civil No. 08-4798 (JNE/FLN).

United States District Court D. Minnesota.

May 13, 2010.

COPYRIGHT MATERIAL OMITTED

COPYRIGHT MATERIAL OMITTED

COPYRIGHT MATERIAL OMITTED

COPYRIGHT MATERIAL OMITTED

COPYRIGHT MATERIAL OMITTED

Leland G. Hansen, Esq., Alejandro Menchaca, Esq., and Scott P. McBride, Esq., McAndrews, Held & Malloy, Ltd., and Misti N. Okerlund, Esq., Myers, Boebel & MacLeod L.L.P., appeared for Plaintiffs American Medical Systems, Inc., and Laserscope.

Arne M. Olson, Esq., and Matthew D. Kellam, Esq., Olson & Cepuritis, Ltd., and Steven C. Moore, Esq., Watje & Moore, Ltd., appeared for Defendant Laser Peripherals, LLC.

ORDER

JOAN N. ERICKSEN, District Judge.

American Medical Systems, Inc., and its subsidiary, Laserscope, (collectively, AMS) assert claims of patent infringement against Laser Peripherals, LLC (LP). LP counterclaims for declarations of noninfringement, invalidity, and unenforceability. The case is before the Court on cross-motions for summary judgment, motions to exclude expert testimony, and LP's motion to strike certain materials filed by AMS in support of its motion for summary judgment. The Court grants in part and denies in part the summary judgment motions, and resolves the motions to exclude and to strike as set forth below.¹ The Court sets this case for trial beginning Monday, July 12, 2010.

I. BACKGROUND

AMS owns U.S. Patent No. 5,428,699 (filed July 2, 1993), which is entitled “Probe Having Optical Fiber for Laterally Directing Laser Beam.” Dr. Russell Pon is the sole named inventor on the '699 Patent. According to the '699 Patent, the probe can be used to treat benign prostatic hyperplasia, which causes an enlarged prostate. The probe laterally directs laser energy out of a tip of a waveguide, such as an optical fiber, onto selected portions of the enlarged prostate to cause necrosis of the tissue. The necrotic tissue sloughs off as small particles which are passed away during urination. The claims of the '699 Patent are directed to apparatuses for communicating and laterally directing electromagnetic energy and probes for treating benign prostatic hyperplasia.

AMS contends that LP infringes independent claims 1 and 25, as well as dependent claims 27-30, of the '699 Patent. The Court construed the disputed claim terms in an Order dated October 13, 2009, 665 F.Supp.2d 1025 (D.Minn.2009). Claim 1 recites:

An apparatus for communicating and laterally directing electromagnetic radiation, comprising:

a waveguide having a tip for communicating electromagnetic radiation in a propagation direction to the tip of the waveguide;

a transmitting surface on the tip of the waveguide;

a reflecting surface on the tip of the waveguide for internally reflecting electromagnetic radiation communicated by the waveguide in a direction lateral to the propagation direction toward a particular area on the transmitting surface; and

wherein the particular area and the reflecting surface are disposed so that greater than about 90% of electromagnetic radiation reflected by the reflecting surface is incident on the particular area at below a critical angle for transmission through the transmitting surface in the lateral direction.

Claim 25 recites:

A surgical probe for treating benign prostatic hyperplasia (BPH), said probe, comprising:

a waveguide having a tip with a glass cladding extending to a distal end of the tip, the waveguide for communicating electromagnetic radiation in a first propagation direction to the tip of the waveguide;

means for positioning the waveguide during surgery;

a transmitting surface on the tip of the waveguide;

a reflecting surface on the tip of the waveguide for internally reflecting electromagnetic radiation communicated in the first propagation direction by the waveguide in a second propagation direction toward the transmitting surface; and

wherein at least 90% of all electromagnetic radiation reflected by the reflecting surface is incident on the transmitting surface at below a critical angle for transmission through the transmitting surface.

According to the '699 Patent, a significant portion of the electromagnetic radiation in prior art probes did not leave the optical fiber in the desired direction due to internal reflection of the laser beam off interfaces between the optical fiber and surrounding environment. Prior art probes used reflective and anti-reflective coating layers to reduce misdirected laser energy, but those layers could melt or carbonize if used at high temperatures, thereby decreasing the efficiency of the probes. The claimed invention improves the efficiency of laterally-directing (side-firing) probes by reducing internal reflection off the surface through which the laser beam is transmitted.

AMS contends that LP's “ScatterFree Lateral Emitting Laser Fibers” infringe the '699 Patent. AMS accuses the following ScatterFree devices: the DBLF-60SF, the HBLF-60SF, the LISA HBLF-60SF, the DBLF-SF-MM, the OBM001239, and the HBLF-60SF-PL. The following figure from U.S. Patent No. 5,537,499 (filed Aug. 18, 1994) illustrates the distal end of the accused devices.²

According to the '499 Patent, the accused devices include an optical fiber 117 having a silica fiber core surrounded by a cladding 119. The cladding 119 maintains light within the optical fiber 117. The cladding in the accused devices is a fluorine-doped silica cladding. The optical fiber 117 terminates in a bevelled surface 118. A silica capsule or cap 122 encloses the distal end of the optical fiber 117 and maintains the distal end of the optical fiber 117 within an air chamber 124. During manufacture of the accused devices, a laser beam fuses the distal end of the optical fiber 117 to the inside wall of the silica capsule 122 at the fused window 125. During use, a laser beam 130 propagates down the optical fiber 117 and is redirected by the bevelled surface 118 laterally through the distal end of the optical fiber 117, the fused window 125, and the capsule 122.

II. DISCUSSION

A. Motions to exclude expert testimony and to strike

LP moves to exclude the expert testimony of Dr. Thomas Milster under Rule 702 of the Federal Rules of Evidence and to strike certain materials filed by AMS in support of its motion for summary judgment for failure to comply with Rules 26(a) and 56(e) of the Federal Rules of Civil Procedure. AMS moves to exclude the expert testimony of Dr. Wayne Knox and George Gerstman under Rule 702.

1. Legal standards

Rule 702 provides:

If scientific, technical, or other specialized knowledge will assist the trier of fact to understand the evidence or to determine a fact in issue, a witness qualified as an expert by knowledge, skill experience, training, or education, may testify thereto in the form of an opinion or otherwise, if (1) the testimony is based upon sufficient facts or data, (2) the testimony is the product of reliable principles and methods, and (3) the witness has applied the principles and methods reliably to the facts of the case.

When evaluating the admissibility of expert testimony, a trial court serves as the “gatekeeper” that ensures the reliability and relevance of the expert testimony offered into evidence. Kumho Tire Co., Ltd. v. Carmichael, 526 U.S. 137, 149, 119 S.Ct. 1167, 143 L.Ed.2d 238 (1999). The proponent of the proposed expert testimony must demonstrate its admissibility by a preponderance of the evidence. Lauzon v. Senco Prods., Inc., 270 F.3d 681, 686 (8th Cir.2001). Proposed expert testimony must meet three prerequisites to be admitted under Rule 702 Id. First, evidence based on scientific, technical, or other specialized knowledge must be useful to the finder of fact in deciding the ultimate issue of fact. Id. Second, the proposed expert witness must be qualified to assist the finder of fact. Id. Third, the proposed testimony must be reliable or trustworthy in an evidentiary sense. Id. To satisfy the third requirement, the proposed testimony must be based on sufficient facts or data, the proposed testimony must be the product of reliable principles and methods, and the proposed expert witness must have applied the principles and methods reliably to the facts of the case. Id.

Rule 26(a) requires a party to disclose the identity of any expert witness it intends to use at trial and provide with that disclosure a written report prepared and signed by the witness, including a complete statement of all opinions the witness will express and the basis and reasons for them, “at the times and in the sequence” ordered by a court. Fed.R.Civ.P. 26(a)(2)(A)-(C). A party that fails to disclose information required by Rule 26(a) shall not be permitted to use that information as evidence at a trial, at a hearing, or on a motion unless the failure is harmless or substantially justified. Fed.R.Civ.P. 37(c)(1); see Trost v. Trek Bicycle Corp., 162 F.3d 1004, 1008 (8th Cir.1998). When fashioning a remedy for untimely disclosure, a court should consider the reason for noncompliance, the surprise and prejudice to the opposing party, the extent to which allowing the information or testimony would disrupt the order and efficiency of the trial, and the importance of the information or testimony. Wegener v. Johnson, 527 F.3d 687, 692 (8th Cir.2008).

Finally, “[t]o be considered on summary judgment, documents must be authenticated by and attached to an affidavit made on personal knowledge setting forth such facts as would be admissible in evidence or a deposition that meets the requirements of Fed.R.Civ.P. 56(e).” Stuart v. Gen. Motors Corp., 217 F.3d 621, 635 n. 20 (8th Cir.2000). Documents that fail to meet those requirements cannot be considered. Id.

2. Dr. Thomas Milster

a. Transmission experiments

Milster, a professor of optical sciences, electrical engineering, and computer engineering at the University of Arizona, conducted three experiments intended to measure light...