Lifescan, Inc. v. Home Diagnostics, Inc.

103 F.Supp.2d 345

LIFESCAN, INC., Plaintiff, v. HOME DIAGNOSTICS, INC., and MIT Development Corp., Defendants.

No. Civ.A. 96-597-JJF.

United States District Court, D. Delaware.

June 20, 2000.

COPYRIGHT MATERIAL OMITTED

COPYRIGHT MATERIAL OMITTED

COPYRIGHT MATERIAL OMITTED

Richard Kirk, Gretchen Ann Bender, Morris, James, Hitchens & Williams, Wilmington, DE, of counsel Philip S. Johnson, Dianne B. Elderkin, Joseph Lucci, Barbara L. Mullin, and Lynn A. Malinoski, Woodcock Washburn Kurtz Mackiewicz & Norris LLP, Philadelphia, PA, for plaintiff.

Arthur G. Connolly, Jr., Arthur G. Connolly, III, Connolly, Bove, Lodge & Hutz, Wilmington, DE, Michael L. Donovan Paul S. Rosenlund, Peter J. Whalen and Anne Marie Heimberger, Hancock Rothert & Bunshoft LLP, San Francisco, CA, for defendants.

OPINION

FARNAN, Chief Judge.

This action was brought by Plaintiff, LifeScan, Inc. against Defendants, Home Diagnostics, Inc. and MIT Development Corp. alleging that Defendants' manufacture and sale of the Prestige meter, a device used by diabetic patients to monitor their blood sugar levels, infringes U.S.Patent No. 5,049,487 ("the '487 Patent"). A nine-day jury trial was held, and the jury returned a verdict finding that (1) both the current version and the earlier version of Defendants' Prestige meter infringed Claim 1 of the '487 Patent under the doctrine of equivalents, (2) Defendants induced the infringement of the '487 Patent and (3) Plaintiff was entitled to damages in the form of a reasonably royalty in the amount of $5,860,940. While the jury found in favor of Plaintiff under the doctrine of equivalents, the jury did not find that either version of Defendants' Prestige meter literally infringed Claim 1 of the '487 Patent. Following the jury's verdict, Defendants filed a Renewed Motion For Judgment As A Matter Of Law (D.I. 442) and a Motion For Partial New Trial (D.I.441). For the reasons set forth below, Defendants' Motion For Judgment As A Matter Of Law will be granted on the issue of infringement and denied on the issue of validity, and Defendants' Motion For A New Trial will be denied.¹

STANDARD OF REVIEW

I. Motion For Judgment As A Matter Of Law

To prevail on a renewed motion for judgment as a matter of law following a jury trial, the moving party "`must show that the jury's findings, presumed or express are not supported by substantial evidence or, if they were, that the legal conclusions implied [by] the jury's verdict cannot in law be supported by those findings.'" Pannu v. Iolab Corp., 155 F.3d 1344, 1348 (Fed.Cir.1998) (quoting Perkin-Elmer Corp. v. Computervision Corp., 732 F.2d 888, 893 (Fed.Cir.1984)); accord Price v. Delaware Department of Correction, 40 F.Supp.2d 544, 549 (D.Del.1999). In assessing the sufficiency of the evidence, the court must give the non-moving party, "as [the] verdict winner, the benefit of all logical inferences that could be drawn from the evidence presented, resolve all conflicts in the evidence in his favor, and in general, view the record in the light most favorable to him." Williamson v. Consolidated Rail Corp., 926 F.2d 1344, 1348 (3d Cir.), reh'g en banc denied, 1991 U.S.App. LEXIS 16758, 1991 WL 228122 (3d Cir.1991); Perkin-Elmer Corp., 732 F.2d at 893. The court may not evaluate the credibility of the witnesses, may not weigh the evidence, and may not substitute its view of the evidence for the jury's view. Price, 40 F.Supp.2d at 550 (holding that judgment as a matter of law may not be granted where jury's view of evidence differs with that manifested in jury's verdict, because such action would usurp jury's role as factfinder). Rather, the court must determine whether the evidence reasonably supports the jury's verdict. See Dawn Equip. Co. v. Kentucky Farms, Inc., 140 F.3d 1009, 1014 (Fed.Cir. 1998); Gomez v. Alleghany Health Servs. Inc., 71 F.3d 1079, 1083 (3d Cir.1995) (describing standard as "whether there is evidence upon which a reasonably jury could properly have found its verdict"); 9A Charles A. Wright & Arthur R. Miller, Federal Practice & Procedure § 2524 at 249-266 (3d ed. 1995) ("The question is not whether there is literally no evidence supporting the party against whom the motion is directed, but whether there is evidence upon which the jury properly could find a verdict for that party.")

II. Motion For A New Trial

In pertinent part, Federal Rule of Civil Procedure 59(a) provides:

A new trial may be granted to all or any of the parties and on all or part of the issues in an action in which there has been a trial by jury, for any of the reasons for which new trials have heretofore been granted in actions at law in the courts of the United States.

Fed.R.Civ.P. 59(a). Among the most common reasons for granting a new trial are the following: (1) the jury's verdict is against the clear weight of the evidence, and a new trial must be granted to prevent a miscarriage of justice; (2) newly discovered evidence exists that would likely alter the outcome of the trial; (3) improper conduct by an attorney or the court unfairly influenced the verdict; or (4) the jury's verdict was facially inconsistent. Zarow-Smith v. New Jersey Transit Rail Operations, 953 F.Supp. 581, 584 (D.N.J.1997) (citations omitted).

The decision to grant or deny a new trial is committed to the sound discretion of the district court. Allied Chemical Corp. v. Daiflon, Inc., 449 U.S. 33, 36, 101 S.Ct. 188, 66 L.Ed.2d 193 (1980); Olefins Trading, Inc. v. Han Yang Chem Corp., 9 F.3d 282 (1993) (reviewing district court's grant or denial of new trial motion under deferential "abuse of discretion" standard). However, where the ground for a new trial is that the jury's verdict was against the great weight of the evidence, the court should proceed cautiously, because such a ruling would necessarily substitute the court's judgment for that of the jury. Klein v. Hollings, 992 F.2d 1285, 1290 (3d Cir.1993). Although the standard for grant of a new trial is less rigorous than the standard for grant of judgment as a matter of law in that the court need not view the evidence in the light most favorable to the verdict winner, a new trial should only be granted where "a miscarriage of justice would result if the verdict were to stand," the verdict "cries out to be overturned," or where the verdict "shocks our conscience." Williamson, 926 F.2d at 1352; see also Price, 40 F.Supp.2d at 550.

DISCUSSION

I. Defendants' Motion For Judgment As A Matter Of Law On The Issue Of Infringement

In support of their Motion For Judgment As A Matter Of Law on the issue of infringement, Defendants raise four arguments. First, Defendants contend that prosecution history estoppel precludes the scope of equivalence that the jury found by virtue of its verdict that the Prestige glucose meters infringed Claim 1 of the '487 Patent under the doctrine of equivalents. Second, Defendants contend that substantial evidence does not support the jury's finding of equivalence. Third, Defendants contend that Plaintiff's admissions limit the scope of its patent claims to in-meter application testing. Lastly, assuming the '487 Patent is limited to in-meter testing, Defendants contend that substantial evidence does not support a finding that out-of-meter application testing is the equivalent of in-meter application testing.

A. Whether Prosecution History Estoppel Precludes the Scope of Equivalence Found by the Jury

In arguing that prosecution history estoppel precludes the scope of equivalence found by the jury in this case, Defendants contend that (1) Plaintiff's amendments to Claim 11 of the original '487 patent and (2) Plaintiff's arguments to the PTO during the prosecution of the '487 Patent demonstrate that Plaintiff limited its claims to a time-specific method. Stated another way, Defendants' contend that the method described in the '487 Patent of causing an analytical measurement to be made is limited to a specific amount of time, i.e. a fixed number of seconds.

In response to Defendants' argument, Plaintiff contends that Claim 1 of the '487 Patent is not limited to a time-specific method. Specifically, Plaintiff contends that the amendments it made to the '487 patent were not made to overcome prior art, and Plaintiff did not, by argument or amendment, narrow its claims to surrender coverage for "non-specific time methods" of taking analytical measurements.

1. Applicable law

The doctrine of prosecution history estoppel limits infringement by otherwise equivalent products or processes. Typically, prosecution history estoppel arises in one of two ways: (1) a change in the scope of a claim is made to overcome an examiner's rejection based on prior art; Pall, 66 F.3d at 1218; or (2) even without a rejection based on prior art, an applicant unmistakably and clearly disavows claim coverage during the prosecution of a patent in an effort to obtain the patent. Southwall Technologies, Inc. v. Cardinal IG Co., 54 F.3d 1570, 1580 (Fed.Cir.), cert. denied, 516 U.S. 987, 116 S.Ct. 515, 133 L.Ed.2d 424 (1995). Thus, prosecution history estoppel bars a patentee from recapturing through the doctrine of equivalence subject matter which was surrendered by either argument or amendment during the prosecution of the patent. Insituform Techs. Inc. v. Cat Contracting, Inc., 99 F.3d 1098, 1107 (Fed.Cir.1996).

Whether the doctrine of prosecution history estoppel applies in a given case is a question of law. Genentech, Inc. v. Wellcome Foundation Ltd., 29 F.3d 1555, n. 35 (Fed.Cir.1994). A rebuttable presumption that prosecution history estoppel applies arises whenever an amendment to a claim is made, but the reasons for the amendment are not shown by the patentee. Loral Fairchild, 181 F.3d 1313, 1322 (citing Warner-Jenkinson, 520 U.S. at 33, 117 S.Ct. 1040). As the Supreme Court explained in Warner-Jenkinson:

[T]he burden [is] on the patentholder to establish the reason for an amendment required during prosecution. The court then would decide...