United States District Court, D. Colorado
For Health Grades, Inc., Plaintiff, Counter Defendant: Adam Lee Massaro, Gregory B. Kanan, Jesus Manuel Vazquez, Jr., Kris John Kostolansky, Lewis Roca Rothgerber LLP-Denver, Denver, CO.
For MDX Medical, Inc., doing business as, Vitals.com, Defendant: David Chunyi Lee, Mark Jon Rosenberg, Scott David Stimpson, Vincent Marc Ferraro, Sills Cummis & Gross P.C.-New York, New York, NY; Scott Butler Murray, Trent S. Dickey, Sills Cummis & Gross P.C.-Newark, Newark, NJ; Terence M. Ridley, Wheeler Trigg O'Donnell, LLP, Denver, CO.
For MDX Medical, Inc., Counter Claimant: David Chunyi Lee, Mark Jon Rosenberg, Scott David Stimpson, Vincent Marc Ferraro, Sills Cummis & Gross P.C.-New York, New York, NY; Scott Butler Murray, Trent S. Dickey, Sills Cummis & Gross P.C.-Newark, Newark, NJ; Terence M. Ridley, Wheeler Trigg O'Donnell, LLP, Denver, CO.
For iTriage, LLC, Interested Party: Robert Charles Blume, LEAD ATTORNEY, Gibson Dunn & Crutcher, LLP-Denver, Denver, CO.
RAYMOND P. MOORE, United States District Judge.
This matter is before the Court on the motion filed by Defendant for a Festo hearing and consideration of vacatur of the pretrial and trial proceedings (ECF No. 883). A hearing was held on October 10, 2014 on that motion pursuant to Festo v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., 535 U.S. 722, 122 S.Ct. 1831, 152 L.Ed.2d 944 (2002) (hereinafter " Festo " ). This Order results.
A. Facts and Procedural History
Plaintiff Health Grades, Inc. (" Health Grades" ) owns U.S. Patent No. 7,752,060, issued July 6, 2010 (the " '060 Patent" ). The invention claimed therein is an " Internet-based system and method that connects
patients with potential healthcare providers, e.g., physicians and hospitals." ('060 Patent col.1 ll.12-14.) Defendant MDx Medical, Inc. (" MDx" ) maintains the website www.vitals.com (the " MDx website" ), the current version of which was launched in January 2011. (ECF No. 195 at 2.) Health Grades contends that the MDx website infringes the '060 Patent. The Court has already set forth the basic facts regarding the claimed invention and the accused product in several previous Orders, dated December 24, 2013; June 26, 2014; and July 15, 2014 (ECF Nos. 696, 808, 810). I will only repeat previously set forth facts as necessary for analysis of the issues now before the Court.
In the first of the referenced prior Orders, the Court ruled on a motion for partial summary judgment of noninfringement filed by MDx, which argued that since every claim of the '060 Patent requires the generation of a report on the " first healthcare provider" which " includes comparison ratings of healthcare providers," and since its reports on the first healthcare provider lacked such ratings, that the Court should grant summary judgment of noninfringement. I granted the motion in part. (ECF No. 696.) The Court found that a report on the first healthcare provider, as opposed to a results list, which includes comparison ratings was required in order to find literal infringement and the current iteration of the MDx website did not literally meet that requirement.
The Court also discussed the parties' arguments with regard to the doctrine of equivalents, discussing generally Health Grades' then-articulated accused equivalents, but finding ultimately that one equivalent could withstand MDx's arguments at summary judgment:
There is, however, one instance where it is less clear whether a noticeable departure from the profile has taken place--the " Search All Similar Doctors" hyperlink, which announces and facilitates providers comparisons and which is present from within multiple sections of the profile.
(ECF No. 696 at 20.)
The December 24, 2013 Order also briefly addressed MDx's contention that the patent prosecution history estops Health Grades from arguing that MDx infringes its patent by equivalents. In doing so, the Court left open the possibility that it would " make future rulings pertaining to prosecution history," particularly once it had addressed the parties' arguments regarding MDx's obviousness defense, and it advised " that the record provided by the parties on this motion is inadequate for detailed consideration of the full implications of the prosecution history in this case." (ECF No. 696 at 26-27.)
After the subsequent rulings on obviousness and willfulness (ECF Nos. 808, 810), MDx moved for the Festo Hearing and a final determination of the prosecution history estoppel issue. (ECF No. 883.) The Court granted that motion and heard fully from both parties at the hearing on October 10, 2014 (the " Festo Hearing" ). This matter is one for the Court to resolve, and the full patent history is before the Court.
B. Legal Standard
Whether prosecution history estoppel applies, as well as its scope, are questions of law to be determined by the Court. Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 344 F.3d 1359, 1367 (Fed. Cir. 2003). Under the doctrine of the equivalents, " a product or process that does not literally infringe upon the express terms of a patent claim may nonetheless be found to infringe if there is 'equivalence' between the elements of the accused product or process and the claimed elements of the patented invention." Warner--Jenkinson Co. v. Hilton Davis Chem.
Co., 520 U.S. 17, 21, 117 S.Ct. 1040, 137 L.Ed.2d 146 (1997) (citing Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 609, 70 S.Ct. 854, 94 L.Ed. 1097, 1950 Dec. Comm'r Pat. 597 (1950)). Patent claims protect the patentee not only from those who produce devices falling within the literal patent claims, but also from " unscrupulous copyists" who " make unimportant and insubstantial changes and substitutions in the patent which, though adding nothing, would be enough to take the copied matter outside the claim, and hence outside the reach of law." Graver Tank, 339 U.S. at 607.
Prosecution history estoppel, however, precludes application of the doctrine of equivalents when a patentee has narrowed a claim for reasons of patentability and thereby surrendered the ground covered by an accused equivalent. Pioneer Magnetics, Inc. v. Micro Linear Corp., 330 F.3d 1352, 1356 (Fed. Cir. 2003). Determining the reach of prosecution history estoppel thus " requires an examination of the subject matter surrendered by the narrowing amendment." Festo at 737. Once the alleged infringer establishes that the patentee has disavowed the ground covered by an accused equivalent, the patentee is barred from relying on the doctrine of equivalents unless he or she can show a recognized exception to application of the estoppel doctrine. Festo at 739-41.
A. The Festo Presumption and Its Exceptions
As noted above, under Festo, narrowing amendments made for reasons of patentability create " a presumption that the patentee surrendered the territory between the original claims and the amended claims." Chimie v. PPG Indus., Inc., 402 F.3d 1371, 1382 (Fed. Cir. 2005). " The patentee may rebut that presumption by showing that the alleged equivalent was unforeseeable at the time the amendment was made, that the alleged equivalent was tangential to the purpose of the amendment, or that there was some other reason suggesting that the patentee could not reasonably be expected to have described the insubstantial substitute in question." Id.
Both parties agree that narrowing amendments were made with respect to the '060 Patent and that they were made for purposes of patentability. ( See, e.g., ECF No. 201, Health Grades Response to MDx's Motion for Summary Judgment, at 10 (" [T]he claim language 'comparison ratings of health care providers' was added for reasons of patentability." ), 31-32 (" The prosecution history makes clear that the comparison ratings limitation was added to overcome the Patent Office's rejection based on Henley and Cook prior art..." ) (emphasis added).) Both parties agree that the Festo presumption applies. ( See, e.g., ECF No. 903 at 29-30 (" By amending the application, the inventor is deemed to concede that the patent does not extend as far as the original claims. We agree with that. We gave up original Claim 1, we gave up original Claim 19, and we are not trying to assert infringement of those claims now.... We need to look at the reason for the amendment and the accused equivalent and figure out whether they are related or not." ).)
Health Grades seeks to rebut or overcome the presumption by relying solely on the second Festo exception, tangentiality. At the hearing, this exchange occurred:
The Court: I know what your position is, but just to make sure that I'm not misunderstanding it, in terms of the three Festo exceptions, you are not relying on, in any way, shape or form, unforeseeability, nor are you relying on the relatively amorphous third exception; that being, some other reason.
Ms. Stoll-DeBell: Yeah. We didn't get into the foreseeability issue, Your Honor. We don't need to, because we think that there's not a relationship between the reason for amendment and the accused equivalent.
The Court: So that's a yes?
Ms. Stoll-DeBell: Yes.
(ECF No. 903 at 30-31.) Health Grades has never argued the other two exceptions, therefore, they will not be addressed in this ...