Minnesota Patent Litigation Wrap-Up — Q4 2019

Co-Authored by: Ryan Petty, Ph.D.

This post continues our summary of substantive orders in patent litigation in the District of Minnesota. These cases address issues of claim construction for design patents, indefiniteness for medical devices, the recapture rule of claim limitations, and amendments to infringement contentions.

Graphic Packaging Int'l, LLC v. Inline Packaging, LLC, 15-cv-03476 (ECT/LIB), 2019 U.S. Dist. LEXIS 170066, 2019 WL 4786148 (D. Minn. Oct. 1, 2019)

Plaintiff Graphic Packaging ("Graphic") sued Defendant Inline Packaging ("Inline") for infringing three design patents on microwaveable susceptor sleeves used to heat food, including "Hot Pockets®." At a Markman hearing, Graphic proposed a construction for each patent as "[t]he overall ornamental appearance of the design for a carton [or carton blank] shown in [the] figures" of the patents. Inline proposed that the claims have "no scope because there are no non-functional aspects of the design."

Judge Tostrud rejected Inline's proposed construction, noting that "the law is clear that 'ornamental' and 'functional' are not opposites; a design or its elements may serve a function and still possess protectable ornamentation." Instead, Graphic identified numerous alternative designs along with consumer survey evidence, which suggested the designs were not purely functional. And during an earlier inter partes review of the associated utility patent, Inline's own expert agreed that the alternative designs would achieve the same functionality as the design patents at issue, further reinforcing that the design was not purely functional.

Judge Tostrud declined to adopt a verbal description of the designs and instead adopted Graphic's proposed construction for all three design patents.

QXMédical LLC v. Vascular Solutions, LLC, 408 F. Supp. 3d 996 (D. Minn. 2019)

Plaintiff and alleged infringer, QXMédical, sought a declaration that patents on guide extension catheters used with larger guide catheter in heart surgery were not infringed and invalid. Patentee and Defendant, Vascular Solutions, LLC, counterclaimed for infringement. Both parties cross-moved for summary judgment.

QXMédical argued that a portion of the guide extension catheter could be both "substantially rigid" and "flexible" under the court's claim construction, and was thus invalid as indefinite. Judge Schiltz disagreed, determining that the claims disclosed a "flexible tip" portion and requires that the substantially rigid portion be "more rigid" than the flexible tip. He further held that the limitation would be "superfluous if 'substantially rigid' and 'flexible' were mutually exclusive categories."

Next, QXMédical argued that three of the asserted reissued patents did not claim "pushrods without a lumen," therefore "surrendering [a] limitation present in the parent patent, and thus violat[ing] the recapture rule." Because Vascular Solutions accepted the Examiner's proposed "without a lumen" limitation, QXMédical argued that they surrendered limitations that included a lumen. Relying on the Notice of Allowance—which did not explicitly state that the patent was granted because of the changed limitation—and the Examiner's familiarity with the prior art, Judge Schiltz granted Vascular Solutions' motion for summary judgment. Judge Schiltz also denied both parties summary judgment motions on literal infringement and doctrine of equivalents regarding whether the Boosting Catheter meets the "without a lumen" limitation.

Vascular Solutions argued that QXMédical's device, the 6 French Boosting Catheter, directly infringed the apparatus claims disclosing a guide extension catheter "for use with" a guide catheter. The claims required the cross-sectional inner diameter of a portion of the guide extension catheter be less than one-French smaller than the diameter of the guide catheter. Judge Schiltz found that accused device met the "for use with" claim limitation, but did not meet the one-French limitation because it is a structural limitation. Judge Schiltz stated a device can only meet structural limitations in an apparatus claim if it does so "as it comes off of the assembly line." He determined the accused device did not meet this limitation because it does not incorporate both a guide catheter and a guide extension catheter. He reasoned the limitation could only be met after a surgeon (an independent third-party) chooses to pair the accused device with a guide catheter of a particular size. Thus, QXMédical was entitled to summary judgment of no direct infringement on the apparatus claim containing the one-French limitation. Judge Schiltz also granted summary judgment to QXMédical on Vascular Solutions' induced infringement claims.

Niazi Licensing Corp. v. Boston Scientific Corp., 17-cv-5094, 17-cv-5096 (WMW/BRT), 2019 U.S. Dist. LEXIS 181611, 2019 WL 5304922 (D. Minn. Oct. 21, 2019)

Co-Defendant St. Jude moved to strike infringement contentions of Plaintiff Niazi Licensing Corp., arguing that the contentions were substantively deficient because they failed to identify an act of direct or indirect infringement. Judge Wright denied the motion to strike, since St. Jude's cited support—Rules 16(f) and 41(b)—dealt with violations of a scheduling order, not substantive deficiency. She clarified that the rules allow for judicial discretion to impose sanctions if the court finds that infringement contentions violate a court order, which was not the case here.

The parties also requested construction of several claims, including two independent claim terms and one method claim. The first disputed term was "inner, pliable catheter." Judge Wright agreed with Defendants that the phrase was indefinite under § 112. She relied on descriptors in the specification and found they did not establish objective boundaries as to the range of pliability being claimed.  Specifically, she found that including an example in the specification was not enough to clarify the scope of the term. The second disputed term was "outer resilient catheter and resilient tube." Again relying on the specification's inability to provide objective criteria for measuring resilience, Judge Wright found the claim indefinite. Finding both claim terms indefinite, she declined to address the merits of the remaining arguments with respect to the dependent claims.

Willis Elec. Co. v. Polygroup Macau Ltd. (BVI), 15-cv-3443 (WMW/KMM), 2019 U.S. Dist. LEXIS 186181, 2019 WL 5541407 (D. Minn. Oct. 28, 2019).

Plaintiff Willis Electric ("Willis") sued Polygroup Macau ("Polygroup") for infringement of several patents generally directed to artificial lighted trees. The litigation was originally stayed pending inter partes review ("IPR") of the asserted claims, which then largely upheld the asserted claims. Once litigation resumed, Polygroup sought to amend its invalidity contentions by adding new prior art and new combinations of already disclosed prior art.

Magistrate Judge Menendez largely rejected Polygroup's motion to amend, only allowing one uncontested reference. She began by emphasizing that "[e]arly prior art disclosure serves the Court's and the parties' interest in efficiency by requiring parties to develop their infringement theories early in the case." To amend, Polygroup must show that the proposed references could not have reasonably been located earlier, that they were not cumulative of already disclosed prior art, and that Polygroup would be prejudiced by denial more than Willis would be if the motion were granted.

Judge Menendez held that Polygroup failed to show diligence in locating many of the proposed prior art references. Of those, some were listed on the face of Polygroup's and Willis's own patents, some were easily locatable through a Google search for third party components, and one was Polygroup's own internal sales data. Though Judge Menendez did allow one reference—evidence of Willis offering to sell a prior art product that was only uncovered through Willis's productions in later discovery.

Polygroup instead asserted that the claim construction positions adopted by Willis at the IPR rendered the proposed prior art newly relevant, but Judge Menendez also rejected this, noting that "claim construction always follows the [invalidity contentions]." Moreover, Polygroup initiated an IPR in 2014 where Willis proposed similar constructions, so Polygroup was aware that some of the proposed prior art would be relevant to the instant litigation.

Finally, Judge Menendez found that allowing the amendments would severely prejudice Willis by effectively allowing Polygroup to have "a second bite at the apple after it has already failed to prove its invalidity contentions at the PTAB." Accordingly, she rejected all proposed invalidity contentions amendments, except the evidence of Willis's own prior sales.

Authors: Joseph Herriges, Veena Tripathi, and Ryan Petty