Double patenting motion is granted; mismarking to be tried to the bench
Tyco Healthcare Group, LP v. C.R. Bard, Inc., and Davol, Inc., Civ. No. 09-264-SLR, January 20, 2011.
Robinson, J. Plaintiff’s motion to bifurcate false marking claims is granted in part and denied in part; plaintiff’s motion to strike portions of expert report is denied; defendants’ motion to amend disputed claim chart is denied as moot; plaintiff’s motion for summary judgment for obviousness-type double patenting is granted; defendants’ motion for summary judgment regarding mismarking is granted – intent and damages to be tried to the court following jury trial; defendants’ motion for summary judgment as to invalidity due to inadequate written description is denied as moot; defendants’ motion for summary judgment of non-infringement is granted in part and denied in part; plaintiff’s motion for leave to serve supplemental expert report is denied.
The disputed technology involves surgical fasteners used in medical procedures. The court agrees with plaintiff that defendants' obviousness-type double patenting defense is moot in view of a terminal disclaimer filed August 5, 2010. Plaintiff moved to strike portions of Dr. Alexander Slocom’s expert report. The court finds the motion to be an attempt to avoid trial on inequitable conduct and denies the motion, the inequitable conduct case to be tried as a bench issue. Plaintiff proceeded on the assumption that false marking was not in the case until the court ruled on the motion to bifurcate that claim. It obtained no expert opinion prior to the close of discovery nor filed a 56(f) motion requesting discovery in response to defendants’ motion. The court notes that the doctrine of equivalents is inapplicable to a false marking analysis. The motion for leave to serve a supplemental report was untimely – 3 months after defendants filed their motion for summary judgment, and over 2 months after the answering papers were filed. The court construes a disputed term such that there can be no literal infringement of one asserted claim. The court finds no presumption that estoppel bars an equivalence claim. Disputed terms not addressed in the summary judgment motions, consistent with the court’s practice, will be presented by the parties during the trial and the court will make its claim construction prior to the case going to the jury.
