Minnesota Patent Litigation Wrap-Up: July 2017

Authored by: Conrad Gosen

This post continues our monthly summary of patent litigation in the District of Minnesota, including short summaries of substantive orders issued in pending cases.

In July 2017, there were three notable decisions for pending cases.

Polaris Industries Inc. v. Arctic Cat Inc., No. 15-cv-4475 (July 10, 2017) (Tunheim)

• Objection to Report and Recommendation re Motion to Amend: Sustained-in-Part

Plaintiff Polaris Industries sought to amend its complaint against Arctic Cat to add allegations that Arctic Cat's infringement of Polaris's side-by-side ATV patents was willful. The patent-in-suit issued the same day that Polaris filed its original complaint, and thus Polaris sought only to add a claim for post-filing willful infringement. However, Polaris also alleged that certain of Arctic Cat's pre-suit conduct was relevant to Polaris's post-filing willfulness claim.

On March 2, 2017, Magistrate Noel partially granted Polaris's motion to amend, allowing the claim for post-suit willfulness, but denying the request as to several paragraphs deemed "conclusory" and several other paragraphs related to pre-issuance conduct as not relevant to the post-suit claim.

Polaris appealed the Magistrate's order to Judge Tunheim, objecting to the extent the order precluded Polaris from relying on pre-issuance conduct in pursuing its willful infringement claim. Arctic Cat opposed Polaris's appeal. Judge Tunheim concluded that pre-issuance conduct may be relevant to post-suit willfulness (citing Minn. Mining & Mfg. Co. v. Johnson & Johnson Orthopedics, Inc., 976 F.2d 1559, 1581 (Fed. Cir. 1992)). As such, Judge Tunheim overruled Magistrate Noel's order to the extent that it purported to preclude Polaris from introducing pre-suit facts to support its willful infringement claim.

Spineology, Inc. v. Wright Medical Technology, Inc., No. 15-cv-0180 (July 25, 2017) (Ericksen)

• Summary Judgment of Non-Infringement: Granted

Spineology brought suit against Wright Medical contending Wright Medical's "X-Ream percutaneous expandable reamer" infringed Spineology's patent rights. An expandable reamer is a tool used in orthopedic surgery for cutting cavities in bone. Spineology's patent described a device with retractable blades that could be used to cut a large cavity in bone without requiring a correspondingly large removal of tissue and muscle to access the bone for surgery.

Wright Medical moved for summary judgment of non-infringement, contending that its accused reamers did not meet the asserted claims' requirements of blades that extent "greater than the . . . cross-section diameter" of the "body" of the tool. In Wright Medical's products, the shaft containing the blades sat inside of a larger tube, and the blades did not extend further outward than the surrounding tube.

The Court had not previously construed the term "body" in the asserted claims, but did so for the purposes of summary judgment. The Court concluded that "body" should refer to the tube surrounding the blade shaft, not the blade shaft itself. Based on this construction, the parties did not dispute that Wright Medical's products were non-infringing.

Select Comfort Corporation v. Tempur Sealy International, Inc., No. 14-cv-0245 (July 12, 2017) (Ericksen)

• Summary Judgment and Daubert Motions: Granted in Part

In this case, Select Comfort alleged that Tempur Sealy's products infringed its patent covering valve assemblies used to monitor and control pressure for inflatable mattresses. Select Comfort and Tempur Sealy each filed a series of Daubert and summary judgment motions, certain of which are described below:

• Motion to exclude expert testimony: Granted. Judge Ericksen granted Tempur Sealy's motion to exclude certain opinions of Select Comfort's technical expert. Specifically, Judge Ericksen found that the expert's opinions constituted improper testimony regarding claim construction and contradicted the specification of the asserted patent.
• Motion to exclude expert testimony: Granted. The Judge granted Tempur Sealy's motion to exclude lost profits and reasonable royalty damages opinions from Select Comfort's economics expert. As to lost profits, Tempur Sealy argued that the expert failed to demonstrate that the patented features formed the basis of consumer demand, and that there were no acceptable non-infringing substitutes in the market place (though the specific reasoning is redacted from the Judge's order). As to reasonable royalty, Tempur Sealy argued that Select Comfort failed to apportion the value of the patented calve enclosure assembly to the broader cost of the air mattress, or even as to the unpatented features of the air pump for the mattress (the expert admitted as much in his deposition). The Court excluded both the lost profits and reasonable royalty opinions as inconsistent with controlling Federal Circuit law.
• Motion to exclude expert testimony: Granted-in-part. Select Comfort sought to exclude the opinions of Tempur Sealy's invalidity expert to the extent the expert failed to disclose the full scope of his opinions until after submitting his report. Specifically, in submitting his report, Tempur Sealy's expert reviewed photographs of a prior art device, but did not review a physical embodiment of the device until after submitting his report. The Court granted the motion to exclude. However, the Court denied a similar motion as to Select Comfort's damages expert, finding that the expert did not "actually form[] any opinions that will be offered at trial based on his examination of the pump."