Intuitive Surgical, Inc. v. Auris Health, Inc.

549 F.Supp.3d 362

INTUITIVE SURGICAL, INC. and Intuitive Surgical Operations, Inc., Plaintiffs,

v.AURIS HEALTH, INC., Defendant.

C.A. No. 18-1359-MN

United States District Court, D. Delaware.

Signed July 19, 2021

Karen E. Keller, David M. Fry, Shaw Keller LLP, Wilmington, DE; Daralyn J. Durie, Vera Ranieri, Eneda Hoxha, Eric C. Wiener, Durie Dangri LLP, San Francisco, CA; Frank A. DeCosta, III, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Washington, DC; Jacob A. Schroeder, Arpita Bhattacharyya, Finnegan, Henderson, Farabow, Garret & Dunner, LLP, Palo Alto, CA – Attorneys for Plaintiffs

Kelly E. Farnan, Renée Mosley Delcollo, Richards, Layton & Finger, P.A., Wilmington, DE; John M. Desmarais, Paul A. Bondor, Tamir Packin, Cosmin Maier, Brian D. Matty, Jamie L. Kringstein, Joze Welsh, Frederick J. Ding, Ryan G. Thorne, Deborah Mariottini, Desmarais LLP, New York, NY – Attorneys for Defendant

MEMORANDUM OPINION

NOREIKA, UNITED STATES DISTRICT JUDGE:

Plaintiffs Intuitive Surgical, Inc. and Intuitive Surgical Operations, Inc. (collectively, "Intuitive") sued Defendant Auris Health, Inc. ("Auris") for infringement of several patents related to minimally invasive robotic-assisted surgical systems.¹ (D.I. 1). Before the Court are 1) Intuitive's Motion to Exclude and Strike Opinions and Testimony of Auris's Experts (D.I. 293), 2) Auris's Motion for Summary Judgment of Non-infringement of U.S. Patent Nos. 6,800,056, 8,801,601,² and 9,452,276 (D.I. 303) and 3) Auris's Motion for Summary Judgment of No Willful Infringement (D.I. 300). The Court held a conference call with the parties on July 8, 2021 to discuss certain issues in these motions. For the reasons discussed below, each of the motions will be granted-in-part and denied-in-part.

I. BACKGROUND

Intuitive manufactures, develops, and distributes minimally invasive robotic-assisted surgical systems such as the da Vinci System. (D.I. 1 ¶¶ 2, 9). Auris developed the Monarch Endoscopy Platform ("Monarch"), which is a robotic bronchoscopy device. (Id. ¶¶ 18, 21).

The asserted patents claim devices, methods, and systems related to robotic surgery. The ’447 patent discloses improved robotic surgical devices, systems and methods for preparing for and performing robotic surgery. ( ’447 patent, 2:61–63). The ’276 patent discloses a catheter system with removable vision probe. ( ’276 patent, 2:56–57). The ’056 patent discloses an endoscope with guiding apparatus. ( ’056 patent, 1:66–2:2). The ’906 patent discloses devices and methods for presenting and regulating auxiliary information on an image display of a telesurgical system to assist an operator in performing a surgical procedure. ( ’906 patent, 3:42–4:34). Two of the motions at issue in this opinion relate to infringement issues with respect to these four patents.

II. LEGAL STANDARDS

A. Motion to Exclude Expert Opinions and Testimony

Rule 702 of the Federal Rules of Evidence provides:

A witness who is qualified as an expert by knowledge, skill, experience, training, or education may testify in the form of an opinion or otherwise if:

(a) the expert's scientific, technical, or other specialized knowledge will help the trier of fact to understand the evidence or to determine a fact in issue;

(b) the testimony is based on sufficient facts or data;

(c) the testimony is the product of reliable principles and methods; and

(d) the expert has reliably applied the principles and methods to the facts of the case.

FED. R. EVID. 702. " Rule 702 embodies a trilogy of restrictions on expert testimony: qualification, reliability and fit." Schneider ex rel. Estate of Schneider v. Fried , 320 F.3d 396, 404 (3d Cir. 2003). First, to be qualified, a witness must possess specialized expertise. Id. The Third Circuit construes this requirement liberally, holding that "a broad range of knowledge, skills, and training qualify an expert." In re Paoli R.R. Yard PCB Litig. , 35 F.3d 717, 741 (3d Cir. 1994). Second, to be reliable, the opinion must be "ground[ed] in the methods and procedures of science" and "more than subjective belief or unsupported speculation." Daubert v. Merrell Dow Pharm., Inc. , 509 U.S. 579, 590, 113 S.Ct. 2786, 125 L.Ed.2d 469 (1993). Third, the expert's opinion "must be relevant for the purposes of the case and must assist the trier of fact." Schneider , 320 F.3d at 404.

The proponent of the expert testimony bears the burden of proving its admissibility by a preponderance of evidence. EMC Corp. v. Pure Storage, Inc. , 154 F. Supp. 3d 81, 92 (D. Del. 2016) ; Daubert , 509 U.S. at 592 n.10, 113 S.Ct. 2786. "Where there is a logical basis for an expert's opinion testimony," the court should deny a Daubert motion and instead allow the jury to determine the credibility and weight of the testimony based on "vigorous cross-examination, presentation of contrary evidence, and careful instruction on the burden of proof." Masimo Corp. v. Philips Elec. N. Am. Corp. , 62 F. Supp. 3d 368, 387–88 (D. Del. 2014) (quoting Daubert , 509 U.S. at 596, 113 S.Ct. 2786 ).

B. Motion for Summary Judgment

Summary judgment shall be granted "if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law." FED. R. CIV. P. 56(a). "Facts that could alter the outcome are ‘material,’ and disputes are ‘genuine’ if evidence exists from which a rational person could conclude that the position of the person with the burden of proof on the disputed issue is correct." Horowitz v. Fed. Kemper Life Assurance Co. , 57 F.3d 300, 302 n.1 (3d Cir. 1995) (internal citations omitted). The moving party bears the burden of proving that no genuine issue of material fact exists. See Matsushita Elec. Indus. Co. v. Zenith Radio Corp. , 475 U.S. 574, 585 n.10, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986).

If the moving party carries its burden, "the nonmoving party must come forward with specific facts showing that there is a genuine issue for trial." Id. at 587, 106 S.Ct. 1348 (cleaned up). The nonmoving party must support an assertion that a material fact is genuinely disputed by: "(A) citing to particular parts of materials in the record, including depositions, documents, electronically stored information, affidavits or declarations, stipulations ..., admissions, interrogatory answers, or other materials; or (B) showing that the materials cited do not establish the absence ... of a genuine dispute ...." FED. R. CIV. P. 56(c)(1).

When deciding whether a genuine issue of material fact exists, the court will "draw all reasonable inferences in favor of the nonmoving party, and it may not make credibility determinations or weigh the evidence." Reeves v. Sanderson Plumbing Prods., Inc. , 530 U.S. 133, 150, 120 S.Ct. 2097, 147 L.Ed.2d 105 (2000). "The mere existence of some alleged factual dispute between the parties," however, "will not defeat an otherwise properly supported motion for summary judgment." Anderson v. Liberty Lobby, Inc. , 477 U.S. 242, 247–48, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986) (emphasis omitted). "If the [nonmoving party's] evidence is merely colorable, or is not significantly probative, summary judgment may be granted." Id. at 249–50, 106 S.Ct. 2505 (internal citations omitted).

III. DISCUSSION

A. Intuitive's Motion to Exclude

1. Claim Construction Issues

a. Plain and Ordinary Meaning Terms

Intuitive moves to exclude portions of Dr. Alterovitz's and Dr. Hooper's non-infringement opinions regarding infringement of the patents-in-suit, asserting that the opinions improperly put the issue of claim construction before the jury regarding terms to be construed. Most of the terms at issue have been given their plain and ordinary meanings. The objections raised as to those terms fall mainly into one of three categories: citation to embodiments in the specification, citation to the prosecution history, and citation to inventor testimony. Dr. Alterovitz and Dr. Hooper may rely on portions of a patent to note that the patent uses the terms consistent with their plain and ordinary meanings. They may not, however, use the patents to assert that the patent claims are limited to the embodiments cited. Additionally, during the July 8, 2021 teleconference, the parties agreed that Dr. Alterovitz and Dr. Hooper may not rely on the cited portions of the prosecution history or inventor testimony at trial until Defendant has obtained permission of the Court to do so upon a showing that the proffered evidence is relevant to the plain and ordinary meaning of the term.

b. End Effector Mounting Formation

One of the terms at issue in Intuitive's motion addresses Dr. Hooper's opinion that the Monarch platform does not have an "end effector mounting formation" as required by claim 2 of the ’447 patent. (D.I. 312 at 3–4, 7). One of the bases for Dr. Hooper's opinion is that the Monarch does not have an "end effector," and thus cannot have an "end effector mounting formation." Dr. Hooper opined that the devices at the end of the Monarch bronchoscope – a camera, lights, and the distal opening of the working channel – do not interact with the environment and are thus not an "end effector."³ (D.I. 313-2, Ex. 7 ¶¶ 83–84). The Court construed "end effector" to mean "device at the end of an instrument used in surgery designed to interact with the environment." (D.I. 141 at 7). The Court rejected Auris's proposal that an end effector must manipulate, by cutting, grasping, or otherwise acting on, body tissue. (Id. at 6–8). The Court acknowledged that the ’447 patent does not foreclose the possibility that an image capture device, which does not necessarily manipulate tissue, could be an end effector. (Id. at 8).

Nevertheless, Dr. Hooper opines that "each component is designed to stay away from surrounding tissue (e.g. , to leave space to illuminate or image the tissue or to allow a manual tool to extend from the working channel towards the tissue)" and thus does not interact with the environment. (Id. ¶ 84). Dr. Hooper's opinion equates "...