IP Law Daily, PATENT—D. Del.: Disposable CO2 canisters for anesthesia device qualified as unpatentable replacement parts under permissible repair rule, (Mar 25, 2014)

By Cheryl Beise, J.D.

Replacement CO₂ canisters designed to be used with a patented anesthesia device qualified as noninfringing replacement parts under the doctrine of permissible repair, the federal district court in Wilmington, Delaware has ruled (Drager Medical GmbH v. Allied Healthcare Products, Inc., March 24, 2014, Robinson, S.). As the patent owner failed to show a likelihood of success on its patent infringement claim, its request for a preliminary injunction was denied.

The plaintiffs—Drager Medical GmbH, Draeger Medical Systems Inc., and Draeger Medical Inc. (together, “Drager”)—manufacture and sell medical and safety equipment, including a line of anesthesia equipment and related products.

Drager owns U.S. Patent No. 8,286,633 (the '633 patent), issued October 16, 2012, and entitled “Carbon Dioxide Absorber for a Rebreathing System.” The patent claims a carbon dioxide (CO₂) absorber for rebreathing systems, such as anesthesia machines. The '633 patent is a combination patent which includes a connection head, which is part of a rebreathing system, and a housing to be inserted and removed from the connection head of the rebreathing system.

A subset of the anesthesia-related products manufactured by Drager includes the “Dragersorb® CLIC” soda lime disposable canisters, which attach to anesthesia machines via the “Drager CLIC” adapter. When a CLIC canister is used up, it is removed from the CLIC adapter and a new CLIC canister is inserted into the CLIC adapter in its place.

Allied Healthcare Products is the only other company to manufacture and sell replacement soda lime disposable canisters that fit the “Drager CLIC” adapter. Drager accused Allied’s “Drager Style” Litholyme and Carbolime products of infringing the '633 patent. Before the court was Drager’s motion for a preliminary injunction.

To obtain a preliminary injunction, a movant must demonstrate: (a) a reasonable likelihood of success on the merits; (b) the prospect of irreparable harm in the absence of the injunction; (c) that this harm would exceed harm to the opposing party; and (d) that granting the injunction is in the public interest.

Likelihood of success. The court noted that the '633 patent is a combination patent which includes a connection head, which is part of a rebreathing system, and a housing to be inserted and removed from the connection head of the rebreathing system. Allied did not sell the combination; it sold only the housing in the form of the replacement CO₂absorbers.

The question before the court was whether Drager’s sale of the patented combination implicated the doctrines of patent exhaustion and/or of permissible repair. The court concluded that application of the doctrine of permissible repair was appropriate under the facts of the case. The court also noted that the doctrine of patent exhaustion likely applied, but it did not address the merits of that theory.

Under the doctrine of permissible repair, once a patented product is purchased, the purchaser has an implied license to use it, including the right to repair the patented article or purchase replacement parts from others. The Supreme Court has explained that “[n]o element, not itself separately patented, that constitutes one of the elements of a combination patent is entitled to patent monopoly, however essential it may be to the patented combination and no matter how costly or difficult replacement may be.” Aro Manufacturing Co. v. Convertible Top Replacement Co., 365 U.S. 336, 345 (1961).

In Sage Products, Inc. v. Devon Indus., Inc., 45 F.3d 1575 (Fed. Cir. 1995), the Federal Circuit held that a patentee’s competitor could not be held liable for contributory infringement of a patented system for disposing of sharp metal instruments by selling disposable inner containers used in the system. The doctrine of repair encompasses any repair that is necessary for the maintenance of the use of the whole of the patented combination through replacement of a spent, unpatented element.

The circumstances of this case were analogous to those at issue in Sage, the court reasoned. Drager sold the patented combination intending that their customers remove and discard spent CO₂ absorbers. Like the removable inner containers of the Sage disposal system, the CO₂ absorbers were unpatented elements of the '633 patent combination, the court found.

Balance of harms. The court also briefly considered the balance of harms factor. Although Drager identified the types of harm that traditionally qualify as not easily compensable by money damages— ongoing price erosion and threat to the Drager brand — the balance of harms did not weigh in Drager’s favor in light of the Supreme Court’s admonition that a patentee may not claim a commercial monopoly over an unpatented, regularly replaceable element of a combination patent.

Because Drager failed to carry its burden of demonstrating infringement or that that the balance of harms weighed in its favor, its motion for a preliminary injunction was denied.

The case is No. 13-1656-SLR.

Attorneys: Denise Seastone Kraft (DLA Piper LLP) for Drager Medical GmbH, Draeger Medical Systems Inc. and Draeger Medical Inc. Shanti Mulpuru Katona (Polsinelli PC) for Allied Healthcare Products Inc.

Companies: Drager Medical GmbH; Draeger Medical Systems Inc.; Draeger Medical Inc.; Allied Healthcare Products Inc.

Cases: Patent DelawareNews