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Intelifuse, Inc. v. Biomedical Enterprises

September 25, 2009

INTELIFUSE, INC., PLAINTIFF AND COUNTERCLAIM-DEFENDANT,
v.
BIOMEDICAL ENTERPRISES, INC., DEFENDANT AND COUNTERCLAIM-PLAINTIFF.



OPINION AND ORDER

Plaintiff and Counterclaim-Defendant InteliFUSE, Inc. ("Plaintiff" or "IFUSE") brings this action against Defendant and Counterclaim-Plaintiff Biomedical Enterprises, Inc. ("Defendant" or "BME"), alleging infringement of U.S. Patent No. 6,268,589 (the "'589 Patent") and U.S. Patent No. 6,323,461 (the "'461 Patent") (collectively, the "Patents"). Defendant has asserted a Counterclaim for Declaratory Judgment alleging that it is not infringing, and has not infringed, either the '589 or '461 Patent, and that the claims of the '589 and '461 Patents are invalid. The Court has jurisdiction of the instant claims pursuant to 28 U.S.C. §§ 1331 and 1338(a).

BME has moved for summary judgment pursuant to Rule 56 of the Federal Rules of Civil Procedure, asserting that the '461 Patent is invalid for certain reasons and that both the '589 and '461 Patents are unenforceable due to the allegedly inequitable conduct of the Patents' inventor. The Court has reviewed thoroughly all of the parties' submissions and, for the reasons explained below, Defendant's motion for summary judgment is denied.

BACKGROUND

The following material facts are undisputed unless otherwise indicated.*fn1 The '589 Patent was issued on July 31, 2001, from United States Patent Application Serial No. 09/462,862, filed with the United States Patent and Trademark Office ("PTO") on January 14, 2000. (Def. 56.1 St. ¶¶ 6-7). The '461 Patent issued on November 27, 2001, from United States Patent Application Serial No. 09/820,411, filed on March 29, 2001. (Id. at ¶¶ 9-10). As issued, the '589 Patent included 23 claims that were directed to a device for heating and thereby closing heat-retractable shape memory clamps. (Id. at ¶ 8.) The '461 Patent included 65 claims, with claims 1-50 directed to a heat-retractable shape memory clamp and claims 51-65 directed to a method for closing a heat-retractable shape memory clamp. (Id. at ¶ 11.) The shape memory clamps (staples) in the '461 Patent are referred to as "Memograph staples." (Id. at ¶ 13.) The apparatus used to heat the Memograph staples in the '589 Patent is referred to as the "Warmsystem" device. (Id. at ¶¶ 13-14.)

The named inventor for each of the patents-in-suit is Dr. Francis Flot ("Flot") who is now deceased. (Id. at ¶ 2.) Flot assigned his rights in the '589 and '461 Patents to M.B.A., S.A. ("MBA"), the company that he had founded and presided over during the prosecution of the patents-in-suit. (Id. at ¶¶ 3-4.) The '589 Patent application was prosecuted on behalf of MBA by Mr. Gary Cohen ("Cohen"), a patent attorney. (Id. at ¶ 22.) IFUSE is the current owner of the patents-in-suit. (Pl. 56.1 St. ¶ 5.)

The '589 Patent Prosecution History

On September 12, 2000, during the prosecution of the '589 Patent application, the PTO Examiner issued an Office Action that rejected then-pending claims 1-5 and 7-10, pursuant to 35 U.S.C. § 102, as being anticipated by United States Patent Serial No. 3,868,956 issued to Alfidi et al. ("the Alfidi Patent"), and rejected then-pending claims 1-3, 7-8, and 10 as being anticipated by United States Patent Serial No. 4,485,816 issued to Krumme ("the Krumme Patent"). (Def. 56.1 St. ¶ 23.) In response, Cohen submitted to the PTO a Reply to Office Action on January 12, 2001, in which he cancelled all 12 of the then-pending claims for the '589 Patent and added 30 new claims (numbered as Claims 13-42), which included the 23 claims that were ultimately allowed following certain amendments made by the Examiner. (Id. at ¶¶ 24-25.) Cohen argued for the patentability of the 30 new claims, distinguishing them from the Alfidi and Krumme Patents as follows:

In Alfidi et al. . . . there is no automatic determination or regulation of the suitable amount of heat to be applied to the appliance, to automatically regulate (control) the amount of heat applied by the heating apparatus for reasons of safety . . . The automated apparatus recited in applicant's claims operates to avoid this potential for damage. [In] Krumme . . . no controls are provided for regulating the amount of heat which is supplied. Control of the apparatus appears to be left solely to the best judgment of the user. Thus, there is no automatic determination or regulation of the suitable amount of heat to be applied to the staples, to automatically regulate (control) the amount of heat applied by the heating apparatus for reasons of safety. (Pl. 56.1 St. ¶ 25). Two of the new claims added to the '589 Patent application were independent claims 13 and 31, each of which specified "[a] device for heating and closing heat-retractable shape memory clamps . . . wherein the electronic power and control circuit operates to automatically deliver one of a plurality of different and predetermined quantities of heat to the clamps using the heating unit." (Def. 56.1 St. ¶ 28) (emphasis added). On March 8, 2001, the Examiner and Cohen discussed during a phone interview, inter alia, whether the phrase "automatically deliver," as used in the then newly-added claims 13 and 31, was "new matter" to the '589 application. (Id. at ¶¶ 29-31; Pl. 56.1 St. ¶ 31.) The substance of this interview was not entered into the public record of the prosecution of the '589 Patent application. (Pl. 56.1 St. ¶ 31.)

In his notes of the interview Cohen wrote that, with respect to claim 13, "'automatically delivers' is new matter." (Declaration of Richard B. Martin ("Martin Decl."), Ex. I.) Cohen testified in his deposition in this action that, during their conversation, the Examiner had characterized "automatically delivers" as new matter and was inclined to issue the '589 Patent if Cohen agreed to remove "automatically" from the phrase "automatically delivers." (Martin Decl., Ex. J, Cohen Depo., at 164:12-165:14.) MBA did not appeal the Examiner's position that "automatically deliver" was new matter.*fn2 The Examiner reached an agreement with Mr. Cohen by which Mr. Cohen approved amending the "automatically deliver" limitation in claims 13 and 31 so as to delete the word "automatically" and use only the term "deliver." (Def. 56.1 St. ¶ 33.) The Examiner approved amending these claims to add the limitation "an automatic cut-out circuit coupled with the adjustment circuit." (Id.) Cohen testified that he agreed to the changes in order to place the application in condition for allowance. (Pl. 56.1 St. ¶ 36.) As amended, claims 13 and 31 of the '589 Patent application issued as claims 1 and 13, respectively, of the '589 Patent. (Def. 56.1 St. ¶ 37.)

The exact phrase "automatically deliver" is not found within the original claims and specifications of the '589 Patent application or Claims 1 and 13 of the '589 Patent. (Id. at ¶¶ 38-39.) However, IFUSE proffers expert testimony that, from the text of the '589 Patent application and the '461 Patent, and in the context of this Court's claim constructions (see Memorandum Order Following Markman Hearing (docket entry no. 48)), the specification and some of the original claims of the '589 Patent application did recite elements and features, such as the "automatic cut-out circuit," which describe and support the disputed subject matter claimed in Claims 1, 30 and 51 of the '461 patent, namely that a quantity of heat is "automatically deliver[ed]." (See Declaration of Cedric Walker ("Walker Decl.") at ¶¶ 3-4, 6-7, 9-17.)

The '461 Patent Prosecution History

On March 29, 2001, three weeks after the March 8, 2001, telephone interview with the Examiner regarding the use of "automatically delivers" in the '589 Patent application, Cohen, on behalf of MBA, filed the application that ultimately issued as the '461 Patent on November 27, 2001. (Def. 56.1 St. ¶ 42.) The '461 Patent application was filed as a "divisional" of the '589 Patent application and was examined by the same PTO Examiner who reviewed the '589 Patent application. (Id. at ¶¶ 43-44.) On July, 17, 2001, the Examiner allowed all of the pending claims in the '461 Patent application, without issuing any office action on the merits. (Id. at ¶ 56). The '461 Patent application contained new information that was not found in the '589 Patent application. (Id. at ¶ 45.) The originally-filed claims of the '461 Patent application included independent Claims 1, 30, and 51, which contain limitations having either the phrase "automatically deliver" (claims 1 and 30) or the phrase "automatically delivering" (claim 51).

(Id. at ¶ 48.) The remaining claims of the '461 Patent directly or indirectly depend on one of the independent claims 1, 30, and 51. (Id. at ¶ 50.)

Independent claims 1, 30, and 51 read as follows:

1. A heat-retractable shape memory clamp used in surgery applications which is closed with a device for heating and closing the heat-retractable shape memory clamp . . . wherein the device includes a unit containing an electronic power and control circuit supplied with line current which is coupled with a heating unit . . . and wherein the electronic power and control circuit operates to automatically deliver one of a plurality of different and predetermined quantities of heat to the clamp using the heating unit.

30. A heat-retractable shape memory clamp used in surgery applications . . . wherein the electronic power and control circuit operates to automatically deliver to the clamp, using the heating unit, a predetermined quantity of heat which is determined by said one of the plurality of settings of the device which is matched to the clamp.

51. A method for closing a heat-retractable shape memory clamp in a surgery application using a device for heating and closing the heat-retractable shape memory clamp, wherein the device includes an electronic power and control circuit supplied with line current which is coupled with a heating unit, and wherein the method comprises steps of: . . . automatically delivering to the clamp, using the heating unit, a predetermined quantity of heat produced responsive to the electronic power and control circuit and determined by the selected setting.

(Def. 56.1 St. ΒΆ 49) (emphasis added). In drafting the disclosure included in the '461 Patent application, Cohen added to the original disclosure of the parent '589 Patent the following sentence, which was not found in the '589 Patent application: "The electronic power and control circuit then operates to automatically determine and ...


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