The opinion of the court was delivered by: William M. Skretny Chief Judge United States District Court
Initially, this action was brought by Gaymar Industries Inc. ("Gaymar") alleging that Cincinnati Sub-Zero Products, Inc. ("CSZ") violated its patent, No. 6,517,510 ("the '510 patent"). However, on September 29, 2009 this Court granted CSZ's application for a stay in light of the pending Inter Partes Reexamination of the patent by the United States Patent and Trademark Office ("PTO"). (Docket No. 91.) Since that time, upon reexamination, the PTO effectively invalidated the patent, rendering Gaymar's claim moot. CSZ now moves this Court for Leave to File a Second Amended Answer (Docket No. 96), asserting a counterclaim that alleges that Gaymar engaged in inequitable conduct. Additionally, as part of that motion, CSZ proposes that this Court (1) reinstate the case, (2) declare CSZ to be the prevailing party, and (3) issue a "targeted discovery" scheduling order. Through a Motion to Compel (Docket No. 110), CSZ also seeks additional discovery responses from Gaymar, which were initially requested in 2008 pursuant to Gaymar's underlying claim. In its third motion, CSZ seeks to join Stryker Corp. ("Stryker") as a party under Fed. R. Civ. P. 25(c). (Docket No. 114.) Finally, for its part, Gaymar opposes each of these motions through its Cross-Motion to Dismiss. (Docket No. 101.) For the following reasons, CSZ's motion to amend, including its three sub-parts, is granted. Further, its motions to compel and join are each denied. Likewise, Gaymar's motion is also denied.
At issue in the underlying case were the parties' competing temperature management products for use in heat therapy, blood and fluid warming, and core body temperature management. Gaymar produces the Medi-Therm® III warming and cooling unit under the '510 patent; CSZ produces the Blanketrol® III. The Medi-Therm® II, the predecessor to the Medi-Therm® III, delivers hot or cold water to an accompanying blanket, mattress pad, or chair pad to regulate a patient's body temperature. It is meant to stabilize a patient experiencing hypo- or hyperthermia. The '510 patent built on this concept and added a new feature whereby the device would regulate water temperature in a predetermined ratio to the patient's body temperature.
Relevant to the present action are allegations that Gaymar acted inequitably in bringing its initial complaint against CSZ. CSZ alleges six instances of such conduct.
First, CSZ claims that Gaymar intentionally failed to disclose the Medi-Therm® II Operations Manual (the "Manual") to the PTO when it applied for its patent. (Second Amended Answer, ¶ 21; Docket No. 98-2.) The Manual describes the operation of the Medi-Therm® II, including a description of the "manual mode," which enables the user to manually control the temperature of the blanket based on a pre-set temperature differential. (Id. ¶ 23.) This function is alleged to be essentially the same as claim 1 in the '510 patent. (Id.) Therefore, CZO considers this prior art directly relating to the '510's patentability.
Second, CSZ claims that Gaymar intentionally failed to disclose the "Caruso article," which contemplates the benefits of cooling a patient with water that is not the "coldest available" to reduce patient discomfort. (Id. ¶ 27.) Claiming that this objective is the same as the only expressed objective of the '510 patent, CSZ asserts that the article is material and should have been disclosed. Indeed, upon reexamination, the patent examiner found that the Caruso article was prior art that made gradient cooling a known technique. (Id.) Gaymar admits it had knowledge of the Caruso article. (Id. ¶ 28.)
Third, CSZ claims that Gaymar intentionally failed to disclose the American Association of Critical Care Nurses' Procedure Manual for Critical Care, Third Edition ("AACN manual") to the PTO. CSZ asserts that this manual is relevant in that it counsels against temperature decreases exceeding 1 degree Fahrenheit every 15 minutes, which relates to the "predetermined rate" claim of the '510 patent. (Id. ¶ 32.)
Fourth, CSZ claims that Gaymar intentionally failed to disclose an article by Roger Hubbard in the American Journal of Emergency Medicine, volume 6, number 3 ("Hubbard article"). Contradicting what Gaymar represented to the PTO, the Hubbard article teaches that significant body cooling occurs with relatively temperate water. (Id. ¶ 36.) CSZ believes that Gaymar's intent to deceive the PTO is demonstrated by the Hubbard article's inclusion in product literature describing the Medi-Therm® III.
Fifth, CSZ claims that Gaymar intentionally failed to disclose the "Stewart letter," wherein Dr. Thomas Stewart, a joint-inventor of the device associated with the '510 patent, described to a customer of the Medi-Therm® II (1) the capability of using gradient- temperature control, (2) the benefits of using the manual mode to minimize discomfort and (3) the benefits of patient temperature control according to a predetermined rate according to the guidelines of the AACN manual. (Id. ¶ 41.) As stated by CSZ, "if the customer followed Dr. Stewart's instructions, [the Medi-Therm® II], performed claim 1 of the '510 patent  several years before the filing of the  application." (Id. ¶ 43.)
Sixth, CSZ claims that Gaymar intentionally failed to disclose United States Patent No. 5,486,204 entitled "Method of Treating a Non-Penetrating Head Wound With Hypothermia" issued on January 23, 1996. (Id. ¶ 45.) This patent, issued to Guy Clifton, who has previously consulted with Gaymar, also details the benefits of defined rates of temperature change like the '510 patent. (Id. ¶ 48.)
Gaymar filed its Complaint in this Court on April 18, 2008, alleging that CSZ's Blanketrol® III infringes its '510 patent. (Docket No. 1.) It moved for a preliminary injunction approximately three months later, on July 15, 2008. (Docket No. 3.) CSZ moved to stay these proceedings on September 10, 2008, in light of its pending request for the PTO to conduct Inter Partes Reexamination of the '510 patent. (Docket No. 21.) This Court granted that motion on September 28, 2009. (Docket No. 91.) In that Decision, this Court also dismissed as "moot with leave to reinstate" both Gaymar's Motion to Strike CSZ's Answer (Docket No. 70) and CSZ's Motion for Leave to Amend its Answer (Docket No. 72).
Thereafter, the PTO ultimately rejected all 134 claims in the '510 patent. (Docket No. 92-2.) As a result, after a status conference, this Court ordered CSZ to file a "motion addressing reinstatement, amendment, determination of prevailing party and targeted discovery." (Docket No. 94). CSZ's first motion (Docket No. 96) responds to that Order.
Gaymar opposes CSZ's motion and seeks dismissal (Docket No. 101.) Further, CSZ seeks to compel the production of certain documents (Docket No. 110) and seeks to join Stryker as a party (Docket No. 114).
A. Reinstatement & Residual Motions
As an initial matter, this Court must address the status of the Stay Order. By the plain terms of that Order, this case was reinstated when the PTO rejected all of the claims in the '510 patent. This Order will contain a directive to the Clerk of the Court to formally re-open the case. The two motions pending at that time, which were denied as moot pending reinstatement, are again denied as moot, but for a different reason -- the relief requested ...