Boston Scientific Corp. v. Johnston & Johnson

534 F.Supp.2d 1062

BOSTON SCIENTIFIC CORPORATION, et al., Plaintiffs, v. JOHNSON & JOHNSON, et al., Defendants.

No. C 02-00790 SI.

United States District Court, N.D. California.

August 21, 2007.

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Edward Francis Mullowney, Shearman & Sterling, Alison R. Aubry, David J. Cerveny, Dominic E. Massa, Gregory F. Noonan, Joseph J. Mueller, Michael J. Summersgill, William G. McElwain, Wilmer Cutler Pickering Hale and Dorr LLP, Boston, MA, Antoinette E. Baker, James R. Warnot, Jr., Matthew T. Byrne, Shearman & Sterling, New York City, Christine E. Duh, Mark Daniel Selwyn, Nathan Loy Walker, Wilmer Cutler Pickering Hale and Dory LLP, Palo Alto, CA, for Plaintiffs.

David T. Pritikin, Douglas I. Lewis, David Giardina, Hugh A. Abrams, Jon Michael Spanbauer, Louis Fogel, Tara C. Norgard, William Hans Baumgartner, Jr., Sidley Austin LLP, Chicago, IL, Susan E. Bower, Robert Burns Morrill; Teague I. Donahey, Sidley Austin LLP, San Francisco, CA, for Defendants.

ORDER RE: CORDIS'S MOTIONS FOR SUMMARY JUDGMENT

SUSAN ILLSTON, District Judge.

On August 21, 2007, the Court heard argument on a series of motions for summary judgment filed by defendants Johnson & Johnson and Cordis Corporation (collectively "Cordis"). Having considered the papers on Me and the arguments of counsel, the Court orders as set out below.

BACKGROUND

In 2002, plaintiffs Boston Scientific Corp., Boston Scientific Scimed, Inc., Scimed Life Systems, Inc. and Schneider (Europe) GmbH (collectively "BSC") brought suit against defendants Johnson & Johnson and Cordis Corporation (collectively "Cordis") for infringement of six patents. The first four patents were invented at Schneider (Europe) by Gerhard Kastenhofer and are directed to a bilayered catheter tube design for balloon angioplasty catheters.

Catheters generally consist of a hollow tube with a wire ("guide wire") running through the hollow interior (or "lumen") of the tube. The insertion (or "distal") end of the catheter shaft is encapsulated in a tubular balloon. The guide wire fits closely inside the tube, so that the inner surface of the tube contacts and slides over the guide wire. These tubular catheters are inserted into and through arteries to reach constricted and clogged sites. The guide wire is inserted first, and acts to guide the catheter tube into position within the artery.

Catheters having this basic structure were already in existence prior to the filing of the Kastenhofer patents. However, no tube material that was stiff enough to be pushed though the twists of arteries was also slippery enough to slide easily over the guide wire without often getting" stuck. Gerhard Kastenhofer, a scientist at Schneider (Europe), invented an improved bilayered catheter design that addressed this problem, which was claimed in the Kastenhofer patents¹

The Kastenhofer catheter design involves a multilayered tube having an outer layer of stiff material to keep the tube firm enough to be pushed up an artery, and an inner layer of soft slippery material to allow the tube to slide easily over the guide wire. The Kastenhofer patents disclose that the bilayered tube is made by a process called coextrusion, in which the molten materials of the inner and outer layers are pushed out together through tubular dies so that the materials merge to form the required tubular structure. In Kastenhofer's preferred embodiment, the outside layer is made of a polyamide (nylon), and the inner layer is made of high density polyethylene ("HDPE").

The other patent at issue here — the Forman U.S. Patent 5,501,759 ("the '759 patent") — claims methods of forming a fusion bond between a catheter and a balloon with a laser, where the catheter and the balloon have high absorptivity. In its preferred embodiment, the catheter body is made from Hytrel polyester, the balloon is made from polyethylene terephthalate (PET), and the laser is a CO₂ laser. Forman filed the patent application for the '759 patent on November 29, 1991.

LEGAL STANDARD

1. Summary judgment

The Federal Rules of Civil Procedure provide for summary adjudication when "the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the party is entitled to a judgment as a matter of law." Fed. R.Civ.P. 56(e)

The party requesting summary judgment has the initial burden to show that there are no genuine issues of material fact. T.W. Elec. Service, Inc. v. Pacific Elec. Contractors Ass'n, 809 F.2d 626, 632 (9th Cir.1987). The party moving for summary judgment may satisfy its burden of production by submitting affirmative evidence that negates an essential element of the nonmoving party's claim or by demonstrating to the court that the nonmoving party's evidence is insufficient to establish an essential element of the nonmoving party's claim. See Celotex. Corp. v. Catrett, 477 U.S. 317, 331, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). If the moving party meets its initial burden, then the burden shifts to the nonmoving party to point to portions of pleadings, admissions, answers to interrogatories, and depositions which, along with any affidavits, which "designate `specific facts showing that there is a genuine issue for trial." See Bhan v. NME Hospitals, Inc., 929 F.2d 1404, 1409 (9th Cir.1991) (citing Celotex, 477 U.S. at 323, 106 S.Ct. 2548).

In judging evidence at the summary judgment stage, the Court does not make credibility determinations or weigh conflicting evidence, and draws all inferences in the light most favorable to the nonmoving party. See T.W. Electric, 809 F.2d at 630-31 (citing Matsushita Elec. Indus, Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986)); Ting v. United States, 927 F2d 1504, 1509 (9th Cir.1991). The evidence the parties present must be admissible. Fed.R.Civ.P. 56(e). A summary judgment motion cannot be defeated by relying solely on conclusory allegations unsupported by factual data. Taylor v. List, 880 F.2d 1040, 1045 (9th Cir.1989). Hearsay statements found in affidavits are inadmissible. See, e.g., Fong v. American Airlines, Inc., 626 F.2d 759, 762-63 (9th Cir.1980).

2. Summary judgment of invalidity

"Summary judgment is appropriate in a patent case, as in other cases, when there is no genuine issue as to any material fact and the moving party is entitled to judgment as a matter of law." Nike Inc. v. Wolverine World Wide, Inc., 43 F.3d 644, 646 (Fed.Cir.1994) (citations omitted). A party seeking to invalidate a patent must overcome a presumption that the patent is valid. 35 U.S.C. § 282; United States Gypsum Co. v. National Gypsum Co., 74 F.3d 1209, 1212 (Fed.Cir. 1996); Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1375 (Fed.Cir. 1986). This presumption places the burden on the challenging party to prove the patent's invalidity by clear and convincing evidence. United States Gypsum Co., 74 F.3d at 1212. The challenging party's burden also includes overcoming deference to the PTO's findings and decisions in prosecuting the patent application. Deference to the PTO is due "[w]hen no prior art other than that which was considered by the PTO examiner is relied on by the attacker." American Hoist & Derrick Co. v. Sowa & Sons, 725 F.2d 1350, 1359 (Fed. Cir.), cert. denied, 469 U.S. 821, 105 S.Ct. 95, 83 L.Ed.2d 41 (1984).

3. Summary judgment of non-infringement

Summary judgment can be used to determine both infringement and noninfringement. Avia Group Intern., Inc. v. LA Gear California, Inc., 853 F.2d 1557, 1560 (Fed.Cir.1988). The moving party bears the burden of proving infringement or noninfringement by a preponderance of the evidence. Mannesmann Demag Corp. v. Engineered Metal Products, Inc., 793 F.2d 1279, 1282 (Fed.Cir.1986).

To establish infringement, every limitation in a claim as construed by the Court must be in the accused product, either exactly or by substantial equivalent. Carroll Touch, Inc. v. Electro Mechanical Systems, 15 F.3d 1573, 1576 (Fed.Cir. 1993). A claim is literally infringed if the accused product is exactly the same as each element of the asserted claim. Hi-Life Products, Inc. v. American National Water-Mattress Corp., 842 F.2d 323, 325 (Fed.Cir.1988). Even if a product does not literally infringe it may infringe under the doctrine of equivalents. See Warner-Jenkinson Co. v. Hilton Davis Chemical Co., 520 U.S. 17, 21, 117 S.Ct. 1040, 137 L.Ed.2d 146 (1997). "A claim element is equivalently present in an accused device if only `insubstantial differences' distinguish the missing claim element from the corresponding aspects of the accused device." Sage Prods., Inc. v. Devon Indus. Inc., 126 F.3d 1420, 1423 (Fed.Cir.1997).

Although the determination of patent infringement is a fact-intensive process, "comparison of a properly interpreted claim with a stipulated or uncontested description of an accused device or process would reflect such an absence of material fact issue as to warrant summary judgment of infringement or noninfringement." D.M.I. Inc. v. Deere & Co., 755 F.2d 1570, 1573 (Fed.Cir.1985).

DISCUSSION

1. MOTION FOR PARTIAL SUMMARY JUDGMENT THAT THE ASSERTED CLAIMS OF THE KASTENHOFER PATENTS ARE INVALID FOR FAILURE TO SATISFY THE WRITTEN DESCRIPTION REQUIREMENTS

Cordis argues that the Kastenhofer patents are invalid for failure to meet the written description requirements of title 35 U.S.C. section 112. For the following reasons, the Court finds that Cordis has not met its burden of showing entitlement to summary judgment on this issue.

The first paragraph of § 112 states:

The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly...