September 1, 2022
This is part of a series of articles discussing recent orders of interest issued in patent cases by the United States District Court for the District of Massachusetts.
In Milliman, Inc. et al v. Gradient A.I. Corp. et al, No. 1:21-cv-10865, Judge Kelley had previously requested clarification from the parties as to the applicability of the Massachusetts Uniform Trade Secrets Act (“MUTSA”), as the events at issue may have predated the MUTSA (see last month’s post here). In resolving competing motions to compel and for a protective order, the Court explained that the plaintiffs “believe that while defendants took their confidential information in June 2018, it was not used or disclosed until after MUTSA’s effective date,” and stated that because “the case is in its early stages and where both parties are content for the court to apply MUTSA at this time,” the Court would do just that.
In the competing motions, the plaintiffs sought to compel discovery and the defendants countered that they could not comply because the plaintiffs had not provided the detailed disclosure of trade secrets at issue required by the MUTSA. The Court considered the plaintiffs’ trade secret disclosure, finding that it “essentially recites allegations from plaintiffs’ complaint with the addition of a few dates” and “much is left to the imagination in determining precisely what trade secrets are at issue here.” The Court thus denied the plaintiffs’ motion to compel and granted the defendants’ motion for protective order, giving the plaintiffs 14 days to supplement their trade secret disclosure and defendants a week thereafter to respond to discovery requests.
In Mizuho Orthopedic Systems, Inc. v. Allen Medical Systems, Inc. et al, No. 1-21-cv-10979, the defendants filed a motion to stay the action pending inter partes review (“IPR”) and a motion to dismiss as to infringement. On July 6, 2022, Judge Gorton denied the motion to stay, granted the motion to dismiss in part, and issued a claim construction order.
Motion to Stay Pending IPR
In determining whether to stay an action pending IPR, this District customarily considers three factors: 1) the stage of the litigation, including whether discovery is complete and a trial date has been set, 2) whether a stay will simplify the issues and 3) whether a stay will unduly prejudice or present a clear tactical disadvantage to the nonmoving party.
The Court denied the defendants’ motion after analyzing the three factors. The Court found that the first factor disfavored a stay because substantial progress had been made in the action: discovery was “substantially complete,” the defendants had filed a dispositive motion that the plaintiffs had opposed, the Markman hearing had been conducted, and trial was less than one year away. While the second factor favored a stay, its weight was reduced by the fact that IPR had not yet been instituted and thus any simplification that might be gained by IPR was conjecture. Last, the Court concluded that the third factor disfavored a stay, finding that a stay would unduly prejudice the plaintiffs because the relevant market 1) was for specialty surgery tables claimed by the asserted patents and 2) was limited to the parties in this case.
Accordingly, the Court denied the defendants’ motion to stay.
Motion to Dismiss as to Infringement of U.S. Patent No. 9,713,562 (“the ’562 Patent”)
The defendants moved to dismiss the claim for infringement of one of the patents in suit, contending that 1) the accused specialty surgery tables allegedly do not literally infringe the ’562 patent and 2) in view of the prosecution history of the ’562 Patent, the plaintiff was allegedly estopped from asserting infringement under the doctrine of equivalents with respect to three elements of the ’562 Patent: a) “boss”, b) “recess and undercut hollow” and c) “spring loaded plunger.”
To establish literal infringement, each limitation set forth in a claim must be found in an accused product exactly. The plaintiff admitted that some elements were only present in the Accused Products under the doctrine of equivalents, and thus the Court dismissed as to literal infringement of the ’562 Patent.
Doctrine of Equivalents - Prosecution History Estoppel
Courts analyze three factors in determining whether prosecution history estoppel applies to prevent application of the doctrine of equivalents: 1) whether one or more amendments before the Patent and Trademark Office (“the PTO”) narrowed the literal scope of the claim; 2) whether the amendment was a substantial one relating to patentability; 3) if the amendment was made for a substantial reason relating to patentability, the Court must determine the scope of the subject matter surrendered by the narrowing amendment.
The term “boss,” a sort of knob or protrusion, was added to Claim 1 of the ’562 Patent after the examiner rejected the patent application over prior art, U.S. Pat. Pub. No. 2009/0229049 to Heimbrock. The Court found that the supposed boss taught by Heimbrock did not permit rotation and is structurally and functionally distinct from the “boss” in the ’562 Patent. Moreover, the court found that the prosecution history reveals that the reason for the amendment was not to surrender a rotational locking mechanism.
The terms “spring loaded plunger” and “recess and undercut hollow” were added after the patent application was rejected as being anticipated by U.S. Pat. Pub. No. 2003/02263176 to Thompson. The Court agreed with the Examiner, who noted during prosecution that these limitations were not present in the prior art and suggested that their addition, inter alia, would lead to allowance.
With these findings, the Court denied the defendant’s Motion to dismiss the infringement claim under the doctrine of equivalents the extent it sought dismissal due to prosecution history estoppel.
Claim Construction - Selected Terms
Following a Markman hearing, the Court construed eight terms in U.S. Pat. No. 10,888,481 (“the ’481 Patent”) and the ’562 Patent. Selected terms are addressed here.
In construing claims, the meanings of the terms are initially discerned from three sources of intrinsic evidence: 1) the claims themselves, 2) the patent specification, and 3) the prosecution history. In the event that analysis of the intrinsic evidence does not resolve an ambiguity in a disputed claim term, the Court may turn to extrinsic evidence, such as inventor and expert testimony, treatises and technical writings.
Selected Terms in the ’481 Patent
1. “coupled to”
The parties disputed whether the term “coupled to” was restricted to direct connections or may also encompass indirect connections. The Court found “coupled to” as used in the ’481 Patent denotes several kinds of structural and functional relationships, both direct and indirect, and thus construed the term as: directly or indirectly connected to.
2. “disengage one or more pawls from a gear rack / the pawl mechanism . . . . configured to engage and disengage the gear rack / move the at least one pawl into and out of engagement with the at least one gear rack / the pawl mechanism configured to engage and disengage the gear rack / disengage and engage one or more pawls from the gear rack”
The plaintiff would construe “engage” and its variants as “intermesh” whereas the defendants preferred “attach and release”. The Court determined that the claimed vertical movement exclusively concerned the inter-recess travel of the carriage, and thus construed the term as: stop meshing with one or more pawls from a gear rack / the pawl mechanism . . . . configured to mesh with and stop meshing with the gear rack / move the at least one pawl into and out of meshing with the at least one gear rack / the pawl mechanism configured to mesh with and stop meshing with the gear rack / stop meshing with and mesh with one or more pawls from the gear rack.
3. “a slide lock knob”
The parties disputed whether the claimed system constituted a slide lock. The Court agreed with the plaintiff that because every time the phrase “slide lock” appeared it was followed directly by “knob” and that “slide lock” described the kind of knob used rather than the locking mechanism as a whole. Thus, the Court construed the term as: a knob configured to be rotated.
Selected Terms in the ’562 Patent
1. “a spring loaded plunger”
The parties disputed whether the claimed plunger must be directly or indirectly connected to a spring. The Court found that the claim language used a broader term and construed the term as: a plunger whose movement is allowed by loading a spring.
Correction of Claim 12 of the ’481 Patent
A court may correct an “obvious typographical error” in a patent if 1) the correction is not subject to reasonable debate upon consideration of the claims and the specification and 2) the prosecution history does not suggest a different interpretation of the claim.
The Court found that the inclusion of the term “at least one gear rack” in the carriage portion of Claim 12 was an obvious error that “facially [does] not make sense,” and it was apparent from the other claims, e.g., Claim 3, the specification and the figures that the gear rack was instead part of a tower. Thus, the Court corrected the ’481 Patent by deleting the term “at least one gear rack” from the elements in Claim 12 comprising the carriage and re-inserting it in Claim 12 as an element of the tower.
In Egenera, Inc. v. Cisco Systems, Inc. No. 1:16-cv-11613, Judge Richard G. Stearns granted in part and denied in part a series of Motions in Limine (“MILs”) as follows:
Article Series: D. Mass. Patent Litigation Update, District of Massachusetts, motion to compel, protective order, claim construction, motion to dismiss
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