Richards Layton & Finger
 

Magistrate Judge Burke Recommends Granting Motion for Summary Judgment of No Infringement

May 9, 2018

In Integra LifeSciences Corp. v. Hyperbranch Medical Technology, Inc., No. 15-819-LPS-CJB (D. Del. Feb. 20, 2018), Magistrate Judge Burke recommended that the Court grant Hyperbranch Medical Technology, Inc.’s motion for summary judgment of non-infringement of one of the five patents asserted by the plaintiffs, Integra LifeSciences Corp., Integra LifeSciences Sales LLC, Confluent Surgical, Inc. and Incept LLC (collectively, “Integra”). The patent at issue related to biodegradable sealants.

According to Judge Burke, the specifications of certain patents-in-suit (and references cited both in those specifications and in the field generally), the prosecution history of a related asserted patent, an expert report submitted by Integra in support of an earlier motion for a preliminary injunction, and the testimony of experts for both sides, all pointed to the absence of a genuine issue of material fact. Judge Burke noted that the alleged material dispute of fact raised by Integra depended on expert testimony that used a construction the Court had rejected; for that reason, internal documents of HyperBranch and statements made by HyperBranch during prosecution of its patents that allegedly showed infringement consistent with the rejected construction would not be able to defeat summary judgment.

Judge Burke also concluded that prosecution history estoppel barred Integra’s doctrine of equivalents argument. In pursuing the patent at issue, Judge Burke found that Integra explicitly excluded what Integra put forward as an equivalent, as the Court had earlier found during Markman proceedings. According to Judge Burke, this sufficed to raise the presumption of prosecution history estoppel, and none of the exceptions applied: there was no factual dispute as to whether the alleged equivalent was foreseeable, as related Integra patents referred to it. Thus, Judge Burke recommended granting the motion for summary judgment of non-infringement. (Chief Judge Stark adopted Judge Burke’s recommendations by memorandum order dated April 6, 2018).

Analysis: Magistrate Judge Burke recommended that summary judgment of non-infringment be granted because the arguments in opposition depended on a construction proposed by the plaintiffs that the Court had rejected earlier. Because the defendant’s motion for summary judgment of invalidity expressly hinged on the plaintiffs’ interpretation of the relevant claim language, Judge Burke concluded that the invalidity motion was moot.