Federal Judiciary

Summary judgment of no literal infringement granted in medical device patent case; trial proceeding on doctrine of equivalents with expert's "boilerplate" assertions excluded

By Michael C. Smith

Smith & Nephew, Inc. v. Arthrex, Inc., 2:07cv335 (E.D. Tex., Feb. 5, 2010)

Judge: T. John Ward

Holding: Defendant's Motion for Summary Judgment of Noninfringement GRANTED in part and DENIED in part

Our compadre on the plaintiff's side in jury selection in Marshall last Monday (my client was the plaintiff in the second case picked that morning, a nonpatent case) was a little company called Smith & Nephew, which started trial this week on its patent claims against Arthrex over a device used in ACL surgery - S&N sells the EndoButton and Arthrex sells the RetroButton.  The lights are on in the parties' rented office space on the square at night, and in the mornings I have to drive to work carefully so as not to run over the lawyers and support staff rushing to the courthouse.  (Nice pink tie on the guy running north on Bolivar at 8:13 a.m. this morning).

Late last week Judge Ward issued his ruling on Arthrex's motion for summary judgment (hereafter "SumJudge" in honor of the commercial embodiments in this case) of noninfringement based on the court's claims construction ruling (would that be "MarkMan"?).  Judge Ward found that the undisputed evidence showed that there was no genuine issue of fact as to whether the RetroButton literally infringed the asserted claims of the patent in suit, and thus granted SumJudge on that basis (hereafter "OuttaHere").  But the Court found that there was an issue as to whether there was infringement under the doctrine of equivalents (hereafter "DocEquivo") - a reasonable jury could find that the differences between the claim elements and the equivalent structures or methods in the RetroButton were insubstantial.  Thus SumJudge was denied as to the DocEquivo claims against the RetroButton.

A related issue was what the plaintiff's expert ("HiredGu--" no, sorry, "PlainExpert") could testify to.  Judge Ward held that PlainExpert could not testify beyond the scope of his report, and to the extent that he did not provide sufficient analysis of whether any particular claim limitation ("ClaimLim") is met by the DocEquivo, PlainExpert could not offer an opinion as to whether the equivalent structure ("EquivoStruc") on RetroButton infringed under DocEquivo.  In some cases, Judge Ward observed, PlainExpert's report was sufficient - but in others it was not, and he set forth where it was nothing more than "conclusory statements and mere boilerplate language".  Thus as to those limitations, Judge Ward ruled that PlainExpert was OuttaHere with respect to whether the ClaimLim are met by the EquivoStruc in the RetroButton under DocEquivo.

Should be a fun trial.

From Docket Navigator.

Full post as published by Eastern District of Texas Federal Court Practice on February 10, 2010 (boomark / email).