United States District Court, W.D. Pennsylvania
For DAVID G. OBERDICK, Special Master: David G. Oberdick, LEAD ATTORNEY, Meyer, Unkovic & Scott LLP, Pittsburgh, PA.
For BIAGIO RAVO, and, ENRICO NICOLO, Plaintiffs, Counter Defendants: Daniel M. Darragh, LEAD ATTORNEY, Cohen & Grigsby P.C., Pittsburgh, PA; Timothy R. DeWitt, LEAD ATTORNEY, PRO HAC VICE, Dewitt Roggin, Washington, DC; Eric S. Newman, Cohen & Grigsby, Pittsburgh, PA.
For COVIDIEN LP, Defendant, Counter Claimant: Michael D. Switzer, Stacy A. Baim, LEAD ATTORNEYS, Scott A. Meyers, Akerman LLP, Chicago, IL; Eric G. Soller, Pietragallo, Bosick & Gordon, Pittsburgh, PA.
Joy Flowers Conti, Chief United States District Judge.
In this case, inventors Biagio Ravo and Enrico Nicolo (collectively " Ravo" ) assert claims for patent infringement and accuse Covidien LP (" Covidien" ) of infringing United States Patent No. 6,117,148 (the " '148 Patent" ), entitled Intraluminal Anastomotic Device. The '148 Patent describes two embodiments of a surgical device that can be used to resect a section of bowel (or any hollow organ) through intussusception followed by anastomosis, in turn preventing the intraluminal contents from contaminating the body cavity. (ECF No. 54 at 1.)
Following a period of expert discovery, Ravo and Covidien both filed motions challenging the qualifications or opinions of the opposing party's expert witness. Ravo challenged, on numerous grounds, the opinion of Henry Bolanos (" Bolanos" ) that the asserted claims of the '148 Patent are invalid because they fail to satisfy the written description and enablement requirement of 35 U.S.C. § 112. (ECF No. 88.) Covidien, in two separately-filed motions, challenged, on numerous grounds, the opinions of Luca Passaggio (" Passaggio" ) that (a) the asserted claims of the '148 Patent are valid and infringed, and (b) the reasonable royalty rate for the '148 Patent is an up-front payment of 5% of Covidien's
projected revenue from sales of the accused device in the third or fourth year after introduction of the product to market, plus a running royalty of not less than 5% of revenue from sales of the Covidien device for the first five years of commercialization, which rate would be reduced to 2% or 3% for the remaining life of the patent. (ECF Nos. 90 and 93.) The court held hearings on these motions on July 24, 2014 (the " July Hearing" ), and August 29, 2014 (the " August Hearing" ), ruling on many, but not all, these challenges. (ECF Nos. 101 and 106.)
Following the July Hearing, the court directed further briefing with respect to the admissibility of Bolanos' opinion that Claim 9 of the '148 Patent is invalid, and instructed Ravo to determine whether Passaggio could obtain copies of several prior license agreements that he referenced in his expert report. (7/24/2014 Minute Entry.) Following the August Hearing, the court ordered the parties to submit supplemental briefing with respect to Covidien's motion to exclude Passaggio's damages opinion. (8/29/2014 Minute Entry.) The court limited that briefing to the following two issues: (1) whether an expert can testify, from memory, concerning past transactions or situations in which he was involved or of which he is aware, without producing documentation, whether generally or in the specific context of a patent damages expert; and (2) what specific evidence of record exists to satisfy Ravo's burden to prove that the other licenses relied upon in Passaggio's expert report are sufficiently comparable to the relevant hypothetical license negotiation. (Id.) At the August Hearing, the parties agreed to rest on the record, with the addition of the supplemental briefing, but without the need for further oral argument, or an evidentiary hearing, on the two outstanding challenges. (ECF No. 106 at 6-12.)
II. Bolanos' Opinion that Claim 9 is not Enabled
A. Bolanos' Opinion
In his expert report, Bolanos opines that the " ligation members 26 cannot qualify as the band required by claim 9," and that " band 72 cannot qualify as the band required by claim 9," leading to his ultimate conclusion that Claim 9 is invalid as not enabled. (ECF No 89-1 at 42-44 (¶ ¶ 103-107).) Claim 9 recites " [t]he surgical device of claim 1 further including a band for attaching the lumen to said luminal attachment and intussesception means." (ECF No. 66-1 at 12.)
B. Ravo's Objections
Ravo objects to these proffered opinions on the ground that Bolanos cannot base his conclusion that Claim 9 of the '148 Patent is not enabled on a factual predicate that contradicts this court's additional claim construction, in which the court concluded that Claim 9 claims the item 72 attachment band. (ECF No. 89 at 7-8; see ECF No. 73 at 5-6.) In response, Covidien argues that this court's additional claim construction of the term " band" did not assess whether the band performed any particular function set forth in Claim 9, and that Bolanos' opinion is directed to that still-disputed point. (ECF No. 99 at 11-12.) Covidien notes that it always contended that Claim 9 was invalid, regardless of how the court construed the term " band." (Id. at 12-13.)
C. The Law
An expert can offer an opinion on how a court's claim construction should be applied to the facts of a case, but cannot offer an opinion that contradicts or disregards a court's claim construction rulings. Personalized User Model, L.L.P. v. Google Inc., No. 09-525, 2014 WL 807736, at *1 (D. Del. Feb. 27, 2014); Carnegie Mellon Univ. v. Marvell
Tech. Group, Ltd., No. 09-290, 2012 WL 5451495, at *1-2 (W.D. Pa. Nov. 7, 2012).
Ravo is correct that this court, in its additional claim construction decision, stated that " claim 9...claims the item 72 attachment band," which band is distinct from the " item 26 ligation member band" that was considered during previous claim construction proceedings. (ECF No. 73 at 6.) Bolanos' statement in paragraph 104 of his expert report that the " band 72 cannot qualify as the band required by claim 9" does directly contradict this court's additional claim construction ruling. (ECF No 89-1 at 43 (¶ 104).)
In an attempt to avoid the conflict between Bolanos' opinion and this court's additional claim construction, Covidien states, in its supplemental briefing, that it:
will not seek to elicit testimony from Mr. Bolanos that is contrary to this Court's claim construction. Covidien and Mr. Bolanos agree that item 72 is a 'continuous ring of material that is capable of expanding and contracting' and, thus, is a 'band' under the construction provided by this Court. What Covidien disputes is that item 72, as disclosed in the '148 patent specification, supports all of the additional limitations in claim 9.
(ECF No. 102 at 3-4.) In other words, according to Covidien, Bolanos' opinion is that Claim 9 of the '148 Patent is invalid because the patent does not disclose an " item 72 attachment band" that performs the function of " attaching the lumen to said luminal attachment and intussusception means." (ECF No. 66-1 at 12 (the '148 Patent).) Covidien suggests that the substance of Bolanos' opinion can be clarified by striking the last sentence from paragraphs 103 and 104 of his expert report. (ECF No. 102 at 3.) Covidien characterizes these sentences as " shorthand for the full language of claim 9," and contends that by striking them this " confusing" shorthand will be eliminated. (Id. at 7.) Ravo asserts that Covidien's argument as " circular." (ECF No. 103 at 5-6.) According to Ravo, arguing that the item 72 band does not perform the functions set forth in Claim 9 is the same thing as arguing that the item 72 band cannot be the band claimed in Claim 9, which inescapably contradicts this court's determination in the additional claim construction decision that the band claimed in Claim 9 is the item 72 attachment band. (Id.)
The court permitted Ravo to add Claim 9 to its list of asserted claims following claim construction. (ECF No. 73 at 2.) Upon doing so, the court was asked to construe two terms that appeared in Claim 9, but were not construed in this court's original claim construction opinion: (1) " surgical device; " and (2) " band." (Id.) To reiterate, Claim 9 recites " [t]he surgical device of claim 1 further including a band for attaching the lumen to said luminal attachment and intussesception means." (ECF No. 66-1 at 12.)
The court found that the term " surgical device" required no further construction, and that the term " band" meant " a continuous ring of material that is capable of expanding and contracting." (ECF No. 73 at 2, 5.) Before construing the term " band," however, the court made the following observations:
... the court must clarify that the '148 Patent refers to two different structural elements that can take the form of a band. The first is " the ligation member 26 which can be a conventional suture thread, a flexible band or the like." '148 Patent, 4:3-4. The second is " an expandable band or loop 72" that is an attachment mechanism used in conjunction with " a plurality of carrier arms" in one version of the second embodiment of the device. '148 Patent, 6:12-13, 18-20, 54-56; Figs. 6 & 7; cls. 9, 10, 19. Yet the parties, at times, refer to these two kinds of bands interchangeably in their written claim construction submissions. For instance, Ravo freely substitutes these two different items in its opening claim construction brief, (ECF No. 66 at 10-12), despite having recognized in its brief opposing Covidien's motion to strike Claim 9 that item 26 and item 72 are two different bands. (ECF No. 59 at ...