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MEDRAD, INC. v. TYCO HEALTHCARE GROUP LP

October 12, 2005.

MEDRAD, INC. Plaintiff,
v.
TYCO HEALTHCARE GROUP LP, et al., Defendants.



The opinion of the court was delivered by: GARY LANCASTER, District Judge

MEMORANDUM

This is an action in patent infringement. Plaintiff, Medrad, Inc., alleges that defendants, Tyco Healthcare Group LP, Mallinckrodt Inc., Liebel-Flarsheim Co., and Nemoto Kyorindo Co., Ltd., have infringed on its patent in violation of the Patent Act, 35 U.S.C. § 271, et seq. The patent asserted in this case, United States Patent No. RE 37,602 (the '602 Patent), discloses and claims inventions relating to patient infusion systems for use with Magnetic Resonance Imaging, or MRI, systems. Plaintiff seeks injunctive and monetary relief.

Before the court are the parties' cross motions for summary judgment regarding the validity of plaintiff's reissued patent. Defendants filed a motion for summary judgment of invalidity of the '602 Patent based on defective reissue [doc. no. 211]. Defendants argue that under the reissue statute, 35 U.S.C. § 251, a patentee may secure reissue of a patent only to correct one of four statutorily identified errors: a defect in the specification, a defect in the drawings, or an error in either claiming too much or too little in the patent. According to defendants, because plaintiff did not file the reissue application that resulted in the '602 Patent to fix one of these four errors, the '602 Patent is invalid.

  Plaintiff also filed a motion for summary judgment of no invalidity based on its filing of the reissue application [doc. no. 216]. Plaintiff argues that a reissue application can be filed to correct any number of mistakes made during the prosecution of a patent. Plaintiff contends that the United States Patent and Trademark Office (the PTO) properly issued the '602 Patent to correct an error caused by a failure to file the appropriate declarations during prosecution of a predecessor patent.

  For the reasons set forth below, defendants' motion will be granted and plaintiff's motion will be denied. Because the patent sued upon in this case has been deemed invalid as a result of these rulings, this case will be closed. I. BACKGROUND

  The facts material to this issue are not in dispute.

  There were two predecessor patents to the '602 Patent, both of which plaintiff owned by assignment. First, U.S. Patent No. 5,494,036 (the '036 Patent), issued on February 27, 1996. And second, U.S. Patent No. RE 36,648 (the '648 Patent), issued on April 11, 2000. Plaintiff sought to reissue the '036 Patent to broaden its claims, and filed a reissue declaration regarding that desired change. During prosecution of the application, however, the PTO actually narrowed plaintiff's claims.*fn1 In addition, during the prosecution, plaintiff added two more inventors to the patent.

  Therefore, while plaintiff originally sought reissue to correct a purported underclaiming error, and filed a reissue declaration regarding that error, the PTO reissued the patent to correct an overclaiming error and an inventorship error. For reasons not clear from the record, plaintiff failed to file a supplemental reissue declaration regarding the two errors identified and ultimately corrected by the PTO, as it was required to do under PTO Rules. 37 C.F.R. § 1.175.

  Shortly after the PTO issued the '648 Patent, plaintiff filed a complaint with the U.S. International Trade Commission alleging illegal importation of infringing devices in violation of section 337 of the Tariff Act of 1930, as amended, 19 U.S.C. § 1337. The Administrative Law Judge found, via summary determination, that the '648 Patent was invalid because plaintiff failed to file supplemental reissue declarations regarding the overclaiming and inventorship errors that were ultimately corrected by the PTO. The ALJ's initial determination became the final determination of the Commission, and the ITC investigation was terminated on February 12, 2001.

  Before the ALJ's initial determination became final, plaintiff filed an application with the PTO seeking reissue of the '648 Patent, which itself was a reissued patent. Plaintiff filed this second reissue application in order to remedy the problems with the '648 Patent that were identified by the ALJ, namely, the lack of supplemental reissue declarations regarding the overclaiming and inventorship errors that were ultimately corrected by the '648 Patent. On March 26, 2002, the PTO issued the '602 Patent, which is the basis of plaintiff's complaint in this case. The '602 Patent does not change the specification, drawings, claims, or any other part of the '648 Patent. The only difference between the two patents is that during the prosecution of the '602 Patent the missing supplemental reissue declarations, identified as lacking by the ITC, were allegedly filed.*fn2

  II. STANDARD OF REVIEW

  Fed.R.Civ.P. 56(c) provides that summary judgment may be granted if, drawing all inferences in favor of the non-moving party, "the pleadings, depositions, answers to interrogatories and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law." To defeat summary judgment, the non-moving party cannot rest on the pleadings, but rather must go beyond the pleadings and present "specific facts showing that there is a genuine issue for trial." Fed.R.Civ.P. 56(e).

  The mere existence of some factual dispute between the parties will not defeat an otherwise properly supported motion for summary judgment. A dispute over those facts that might affect the outcome of the suit under the governing substantive law, i.e. the material facts, however, will preclude the entry of summary judgment. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). Similarly, summary judgment is improper so long as the dispute over the material facts is genuine. Id. In determining whether the dispute is genuine, the court's function is not to weigh the evidence or to determine the truth of the matter, but only to determine whether the evidence of record is such that a reasonable jury could return a verdict for the non-moving party. Id. at 248-49. Under these standards, the non-moving party must do more than show there is "some metaphysical doubt" as to the material facts. Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574, 586 (1986).

  "Where the record taken as a whole could not lead a rational trier of fact to find for the non-moving party, there is no `genuine issue for trial.'" Matsushita Elec., 475 U.S. at 587 (citations omitted). In summary, the inquiry under a Rule 56 motion is whether the evidence of record presents a genuine dispute over material facts so as to require submission of the matter to a jury or whether the evidence is so one-sided that ...


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