Clintec Nutrition Co. v. Baxa Corp.

988 F.Supp. 1109

CLINTEC NUTRITION COMPANY and Baxter International, Inc., Plaintiffs, v. BAXA CORPORATION, Defendant.

No. 94 C 7050.

United States District Court, N.D. Illinois, Eastern Division.

August 21, 1997.

Michael Sennett, Matthew Aaron Phillips, Bell, Boyd & Lloyd, Chicago, IL, Robert

Morton Ward, Robert M. Barrett, Brian Michael Mattson, Robert James Depke, Hill, Steadman & Simpson, Chicago, IL, for Clintec Nutrition Co., Baxter Intern., Inc.

David Barry Goroff, Hopkins & Sutter, P.C., Chicago, IL, Joseph Nevi Hosteny, Raymond P. Niro, Arthur Anthony Gasey, Paul K. Vickrey, Niro, Scavone, Haller & Niro, Ltd., Chicago, IL, for Baxa Corp.

John R. Myers, Michael Sennett, Matthew K. Phillips, Bell, Boyd & Lloyd, Chicago, IL, for Baxter Healthcare Corp.

MEMORANDUM OPINION AND ORDER

BUCKLO, District Judge.

Clintec Nutrition Company¹ ("Clintec") sued Baxa Corporation ("Baxa") for patent infringement, literally and under the doctrine of equivalents. Baxa moved for summary judgment. Clintec moved for summary judgment with respect to literal infringement of claim 40. Baxa moved for cross-summary judgment with respect to literal infringement of claim 40. For the following reasons, Baxa's summary judgment motion and cross-summary judgment motion are granted. Clintec's cross-summary judgment motion is denied.

BACKGROUND

Clintec owns U.S. Patent No. 4,653,010 ("'010 patent"). The '010 patent describes a computerized device for compounding liquids into an intravenously administered nutritional mixture.² The operator enters sets of parameters into the host computer via a video display terminal, or retrieves them from the prescription library maintained by the host computer. A "set of parameters" corresponds to an intravenous mixture, or "bag," for a given patient and is expressed in terms of different "base solutions" such as dextrose, amino acids, lipids, and sterile water.³

The operator enters the sets of parameters into one or more time slots or queues, depending on the number of dosages to be administered to a given patient within a twenty-four hour period. Each time slot or queue corresponds to a given time interval within a twenty-four-hour day.

The operator then reviews each queue of the sets of parameters and authorizes the compounding of each member of the queue. After all members of the queue have been reviewed for authorization, the host computer sorts the authorized sets of parameters of the given queue based on the specified types of base solution families. The sorted sequence can also be sorted a second time in accordance with the required base solution concentrations, and a third time, based on the size of the needed bag for each set of parameters.

Once a group of authorized sets of parameters has been sorted, the system generates a set of labels corresponding to the sorted order. The sorted sets of parameters are transmitted to the compounding apparatus in the sorted order.

The purpose of sorting the sets of parameters for mixtures to be compounded is completely to empty each base solution container during compounding, before removing it from the compounding apparatus. Waste occurs when the base solution containers are attached and detached from the compounding apparatus. Careful ordering of the mixtures to be compounded at one time minimizes the required number of base solution containers and, therefore, the associated costs. If the need arises, the operator may instruct the compounder to compound a mixture out of the sorted order.

Clintec claims that Baxa's automated compounders infringe the claims of its '010 patent. Baxa moves for summary judgment, contending that there is no genuine issue of material fact that its compounders infringe any of the claims of the '010 patent literally or under the doctrine of equivalents. Clintec also moves for summary judgment, arguing that, with respect to claim 40, there is no genuine issue of material fact that Baxa literally infringes.⁴ In response, Baxa moves for cross-summary judgment, essentially reiterating the arguments of its initial summary judgment motion viz-a-viz claim 40.

ANALYSIS

It is undisputed that the claims Clintec asserts are infringed by Baxa depend upon one of the following six independent claims: 1,⁵ 19,⁶ 40,⁷ 67,⁸ 87,⁹ and 93.¹⁰ If Baxa's accused compounders do not infringe Clintec's independent claims, they likewise do not infringe Clintec's asserted claims. Carroll Touch, Inc. v. Electro Mechanical Sys., Inc., 15 F.3d 1573, 1576 (Fed.Cir.1993). A patentee may prove infringement in one of two ways — literal infringement or infringement under the doctrine of equivalents. Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, ___, 117 S.Ct. 1040, 1045, 137 L.Ed.2d 146 (1997). Clintec alleges both.

I. Literal Infringement

A. Claims 1, 19, 87, and 93

The first step in the literal infringement analysis is claim construction, whereby the court determines the scope and the meaning of a claim. Markman v. Westview Instruments, Inc., 52 F.3d 967, 977-79 (Fed. Cir.1995), aff'd 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996); Carroll Touch, 15 F.3d at 1576.

At issue are the following elements¹¹ of the following claims:¹²

Claim 1 — "the step[] of ... sorting the sets of parameters in accordance with the particular base solutions included in each set and amount of each base solution included in each set to minimize the needed quantity of containers of base solution to produce said doses."

Claim 19 — the "means for sorting said sets of parameters in accordance with the particular base solutions included in each set to minimize the required quantity of containers of base solution to produce said doses."

Claim 87 — "the step[] of ... sorting the sets of parameters in accordance with the particular base solutions included in each of said sets; and the amount of each particular solution included in each set to minimize the quantity of containers of base solutions necessary to produce said mixtures."

Claim 93 — the "means for sorting said sets of parameters in accordance with the particular base solutions included in each said set and the amount of each base solution used to minimize the quantity of containers of base solutions needed to produce said doses."

The "means" and the "step" elements of the above claims recite a function for sorting sets of parameters without reciting a definite structure in support of that function. The parties agree that Clintec has expressed these elements in the "means (or step)-plus-function" terms, subject to the requirements of 35 U.S.C. § 112, ¶ 6, which provides that "[a]n element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof." Literal infringement of a claim containing a means or a step clause requires that the accused device (1) perform the identical function as that identified in the limitation, and (2) do so with a structure which is the same as or equivalent to that disclosed in the specification. Carroll Touch, 15 F.3d at 1578; § 112, ¶ 6 (means (step)-plus-function element "shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof").

Construing the claims, I conclude that the function in the means and step elements of claims 1, 19, 87, and 93, is, unambiguously, the sorting of a set of parameters to be compounded, in accordance with the particular base solutions and their amounts to be included in each set of parameters, such as to minimize the quantity of containers of the base solutions. As to the structure,¹³ the specification clearly discloses that it is the host computer which sorts the sets of parameters. (See '010 patent, col. 3, lines 44-50) ("The host computer then sorts all of the authorized bags based on the specified base solutions."); ('010 patent, col. 8, lines 38-49) ("After all of the members of a given queue have been reviewed for authorization the authorized members of the queue are sorted by the host computer 4 based on the specified types of base solution families...."); ('010 patent, col. 4, lines 65-69) ("The host computer stores on its disk drive 4b programs for ... sorting ....") (emphases added).¹⁴

Having been construed, the claim elements must now be compared (or applied) to the infringing devices. Carroll Touch, 15 F.3d at 1576. Although this step is for the trier of fact, summary judgment is appropriate where there is no genuine issue of material fact. Southwall Technologies, Inc. v. Cardinal IG Co., 54 F.3d 1570, 1575 (Fed. Cir.1995). To show that a genuine issue of material fact exists, Clintec relies on two groups of evidence: Baxa's own statements and Clintec's experts' reports.

1. Baxa's Statements

Clintec points to three statements in the operating documents of Baxa's compounders. One states that the device "[s]orts patient solutions when loaded from disk." (Ex. S at 13.¹⁵) Another says that "[i]t is also possible to create a group of solutions by repeating a series of previous solutions." (Ex. T at 5-15.) The third states that an "option switch causes TPN-PC PLUS to implement a series of modifications that emulate the behavior of the Multi-Task Operating System from Clintec." (Id. at 5-73.)

Clintec also points to two excerpts of the testimony of Baxa's expert, Dennis Tribble. Here, Mr. Tribble stated that Baxa's compounders have the capacity to sort solution formulas based upon the patient's last name, (Tribble Dep., Ex. L at 82), and that if a user wishes, he or she may alter the sequence in which solutions are compounded.¹⁶ (Id. at 276-77.)

2. Clintec's Experts' Reports

According to the Reports by Clintec's experts, Jeffrey P. Campbell and David A. Uhen,¹⁷ when the operator of a Baxa compounder enters into the computer orders for patient solutions, he or she must designate each patient as a category: "adult," "pediatric," or "neonate." The...