Zimmer Surgical, Inc. v. Stryker Corp.

365 F.Supp.3d 466

ZIMMER SURGICAL, INC. and Dornoch Medical Systems, Inc., Plaintiffs;

v.STRYKER CORPORATION and Stryker Sales Corporation, Defendants and Counterclaim Plaintiffs;

v.Zimmer, Inc., Zimmer Surgical, Inc., Dornoch Medical Systems, Inc., and Zimmer U.S., Inc., Counterclaim Defendants.

Civil Action No. 16-679-RGA

United States District Court, D. Delaware.

Signed March 7, 2019

Frederick L. Cottrell, III and Christine D. Haynes, RICHARDS, LAYTON & FINGER LLP, Wilmington, DE; J. Michael Jakes (argued), Kathleen A. Daley (argued), Susan Y. Tull, Benjamin A. Saidman, and Scott A. Allen (argued), FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP, Washington, DC, attorneys for Plaintiffs and Counterclaim Defendants.

Anne Shea Gaza and Samantha G. Wilson, YOUNG CONAWAY STARGATT & TAYLOR, LLP, Wilmington, DE; Robert A. Surrette (argued), Sandra A. Frantzen (argued), Deborah A. Laughton, Ryan Pianetto, and Bryce Persichetti, MCANDREWS, HELD & MALLOY, LTD, Chicago, IL, attorneys for Defendants and Counterclaim Plaintiffs.

MEMORANDUM OPINION

ANDREWS, U.S. DISTRICT JUDGE:

Currently pending before the Court are the parties' motions for summary judgment (D.I. 309, 310, 311, 312, 313, 316, 356, 411) and Daubert motions to exclude expert testimony and opinions. (D.I. 317, 321, 322, 327). The parties have fully briefed the issues (D.I. 314, 318, 320, 323, 324, 328, 351, 353, 355, 359, 360, 361, 386, 387, 389, 391, 392, 393, 411, 413, 415). The Court heard helpful oral argument on January 22, 2019. (D.I. 417).

I. BACKGROUND

On August 8, 2016, Zimmer Surgical, Inc. and Dornoch Medical Systems, Inc. (collectively, "Zimmer") filed suit against Stryker Corporation and Stryker Sales Corporation (collectively, "Stryker") for infringement of U.S. Patent No. RE 44,920 ("the '920 patent"). (D.I. 1). On May 22, 2018, Stryker filed counterclaims against Zimmer Surgical, Inc., Dornoch Medical Systems, Inc., Zimmer Inc., and Zimmer U.S. Inc. (also collectively, "Zimmer") for infringement of U.S. Patent No. 9,579,428 ("the '428 patent") which was applied for and issued during the pendency of this suit. (D.I. 251).

The '920 patent is a reissue of U.S. Patent No. 7,892,420 ("the '420 patent"). It issued on June 3, 2014 and is directed to a fluid waste management system combining a movable waste fluid collection cart with a waste fluid disposal unit. The '920 patent claims priority to U.S. Patent No. 6,893,425 ("the '425 patent"). The '420 patent was filed as a continuation-in-part of the application for U.S. Patent No. 7,258,711 ("the '711 patent"). The '711 patent was filed as a divisional of application no. 10/090,221 on March 4, 2002, which issued as U.S Patent No. 6,893,425 ("the '425 patent"). The application for the '425 patent was published as Publication No. US 2003/0164600 ("the '600 publication").

In 2013, Dornoch sought to reissue the '420 patent and add new claims 15-41. These reissue claims are directed to a "system for handling waste fluid" that has two containers, each "being configured to collect liquid waste from the patient." ( '920 patent, cls. 15, 29). Zimmer asserts only new reissue claims¹ against Stryker. Zimmer alleges that Stryker's Neptune 2 and Neptune 3 waste collection systems infringe the '920 patent.

The '428 patent issued on February 28, 2017 during the pendency of this litigation. The '428 patent is directed to a waste collection system with a removable intake manifold that prevents the release of uncollected waste still in the manifold. ( '428 patent col. 1:31-37). Stryker accuses Dornoch's Transposal® UltrafleX Fluid Waste Management System ("the Ultraflex system") and IntelliCart system of infringing claims 1-6, 10, 14-16, 20, 23-25, 28 and 29 of the '428 patent. (D.I. 359 at vii).

The parties now move for summary judgment on a multitude of issues (D.I. 309, 310, 311, 312, 313, 316, 356) and for exclusion of certain expert testimony and opinion (D.I. 317, 321, 322, 327).

II. LEGAL STANDARD

A. Summary Judgment

"The court shall grant summary judgment 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). The moving party has the initial burden of proving the absence of a genuinely disputed material fact relative to the claims in question. Celotex Corp. v. Catrett , 477 U.S. 317, 330, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). Material facts are those "that could affect the outcome" of the proceeding, and "a dispute about a material fact is ‘genuine’ if the evidence is sufficient to permit a reasonable jury to return a verdict for the nonmoving party." Lamont v. New Jersey, 637 F.3d 177, 181 (3d Cir. 2011) (quoting Anderson v. Liberty Lobby, Inc. , 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986) ). The burden on the moving party may be discharged by pointing out to the district court that there is an absence of evidence supporting the non-moving party's case. Celotex , 477 U.S. at 323, 106 S.Ct. 2548.

The burden then shifts to the non-movant to demonstrate the existence of a genuine issue for trial. Matsushita Elec. Indus. Co. v. Zenith Radio Corp. , 475 U.S. 574, 586–87, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986) ; Williams v. Borough of West Chester, Pa. , 891 F.2d 458, 460–61 (3d Cir. 1989). A non-moving party asserting that a fact is genuinely disputed must support such an assertion 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 [by the opposing party] do not establish the absence ... of a genuine dispute ...." Fed. R. Civ. P. 56(c)(1).

When determining whether a genuine issue of material fact exists, the court must view the evidence in the light most favorable to the non-moving party and draw all reasonable inferences in that party's favor. Scott v. Harris, 550 U.S. 372, 380, 127 S.Ct. 1769, 167 L.Ed.2d 686 (2007) ; Wishkin v. Potter , 476 F.3d 180, 184 (3d Cir. 2007). A dispute is "genuine" only if the evidence is such that a reasonable jury could return a verdict for the non-moving party. Anderson , 477 U.S. at 247–49, 106 S.Ct. 2505. If the non-moving party fails to make a sufficient showing on an essential element of its case with respect to which it has the burden of proof, the moving party is entitled to judgment as a matter of law. See Celotex Corp. , 477 U.S. at 322, 106 S.Ct. 2548.

B. Daubert

Federal Rule of Evidence 702 sets out the requirements for expert witness testimony and states:

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. The Third Circuit has explained:

Rule 702 embodies a trilogy of restrictions on expert testimony: qualification, reliability and fit. Qualification refers to the requirement that the witness possess specialized expertise. We have interpreted this requirement liberally, holding that a broad range of knowledge, skills, and training qualify an expert. Secondly, the testimony must be reliable; it must be based on the "methods and procedures of science" rather than on "subjective belief or unsupported speculation"; the expert must have "good grounds" for his or her belief. In sum, Daubert holds that an inquiry into the reliability of scientific evidence under Rule 702 requires a determination as to its scientific validity. Finally, Rule 702 requires that the expert testimony must fit the issues in the case. In other words, the expert's testimony must be relevant for the purposes of the case and must assist the trier of fact. The Supreme Court explained in Daubert that Rule 702's "helpfulness" standard requires a valid scientific connection to the pertinent inquiry as a precondition to admissibility.

By means of a so-called "Daubert hearing," the district court acts as a gatekeeper, preventing opinion testimony that does not meet the requirements of qualification, reliability and fit from reaching the jury. See Daubert ("Faced with a proffer of expert scientific testimony, then, the trial judge must determine at the outset, pursuant to Rule 104(a) of the Federal Rules of Evidence whether the expert is proposing to testify to (1) scientific knowledge that (2) will assist the trier of fact to understand or determine a fact in issue.").

Schneider ex rel. Estate of Schneider v. Fried, 320 F.3d 396, 404-05 (3d Cir. 2003) (cleaned up).²

III. DISCUSSION

A. SUMMARY JUDGMENT

1. The '920 Patent is Entitled to a Priority Date of March 4, 2002

Zimmer moves for summary judgment that the '920 patent is entitled to a priority date of March 4, 2002. (D.I. 314 at 12). Stryker moved for summary judgment of invalidity because it argues that the '920 claims are not entitled to a priority date earlier than 2006 or, alternatively, August 2004. (D.I. 320 at 5, 7). The parties agree that entitlement to priority is a question of law to be determined at summary judgment and that no material disputes of fact exist. (D.I. 417 at 6:11-13, 12:3-7; D.I. 314 at 13 (citing case law) ). Stryker asserts that Zimmer is not entitled to a March 4, 2002 priority date for two reasons: (1) the priority chain was broken when the application for the '420 patent (of which the '920 patent is a reissue) did not reference the original '425 patent application, and (2) the disclosure of the original application does not provide the required § 112 written description support for the asserted claims. (D.I. 320 at...