IP Law Daily, PATENT—W.D. Wash.: Sellers of endoscope pre-cleaning kits denied fee award for successful defense, (Apr 17, 2014)

By Thomas Long, J.D.

Medtrica Solutions Ltd. and STERIS Corp. (“Steris”) were not entitled to an award of attorneys’ fees incurred in successfully defending against claims that endoscope pre-cleaning kits they sold infringed a patent held by Cygnus Medical LLC, the federal district court in Seattle has ruled (Medtrica Solutions Ltd. v. Cygnus Medical LLC, April 16, 2014, Lasnik, R.). Cygnus’s infringement claims were not objectively baseless, and there was no evidence that Cygnus engaged in litigation misconduct warranting a fee award.

Cygnus Medical owned U.S. Patent No. 7,648,023 (“the '023 patent”), entitled “Endoscope Pre-Clean Kit,” covering a pre-cleaning kit that can be used immediately after a procedure to clear debris from the channel and insertion tube of the endoscope before a more thorough cleaning can be completed. Claim 1 of the patent covered an endoscope pre-cleaning kit comprising a sealed, flexible pouch; a pre-diluted detergent contained within the pouch; an absorbent pad within or outside the pouch; at least one weakened line in the front and back sidewall panels; and a pouch capable of standing upright before it is opened to access the detergent.

Medtrica’s “Appli-Kit” and Steris’ “Revital-Ox” products are stand-up pouches that contain pre-diluted enzymatic detergent and a sponge. Each pouch is manufactured by a third party and contains v-shaped “notches” on both sides approximately two inches below the top of the pouch.

Medtrica filed suit, seeking a declaration that the accused products did not infringe the '023 patent and that the '023 patent was invalid. Cygnus filed a counterclaim against Medtrica and a third-party complaint against Steris, alleging infringement of claims 1-4, 10, and 11 of the patent.

The district court construed the term “weakened line” to mean “a physical, identifiable segment of material that is less strong than the surrounding material.” The intrinsic evidence—particularly the prosecution history—demonstrated that “the line must be identifiable to the user,” not just hypothetically, but physically present. The court determined that that the accused products did not literally infringe the patent at issue because they lacked the “weakened line” limitation of each of the asserted claims. Nor did the products infringe under the doctrine of equivalents. The court therefore granted summary judgment of noninfringement in favor of Medtrica and Steris.

Medtrica and Steris then moved for an award of attorneys’ fees pursuant to Sec. 285 of the Patent Act. Section 285 permits a court to award attorneys’ fees to the prevailing party in “exceptional” cases. When an accused infringer is the prevailing party, factors relevant to determining whether a case is “exceptional” include the closeness of the underlying legal question, pre-filing investigations and discussions with the defendant, and litigation behavior. In the absence of litigation misconduct or misconduct in securing the patent-in-suit, fees may only be awarded if the litigation is (1) brought in subjective bad faith and (2) is objectively baseless. A lawsuit is objectively baseless if the lack of foundation for the claim was either known or so obvious that it should have been known to the party asserting the claim.

Medtrica and Steris failed to show that the case was exceptional, according to the court. Cygnus complied with the court’s scheduling order and disclosed its claim construction and infringement contentions on time. Cygnus’s decision not to engage in a full discussion of its theory of infringement after the litigation was filed did not provide any insight into the objective merit of the claims, the court said.

Although it did not ultimately succeed, Cygnus justifiably argued that the term “weakened line” should be construed to mean “a line that creates a weakness to ease opening of the pouch,” in part based on the use of “weakness” in the specification. Therefore, its proposed construction was not objectively baseless.

With regard to Cygnus’s infringement contentions, the notches in the accused products were physically distinct elements on the sidewall panels; one could, in good faith, argue that they constituted areas of weakness, the court said. The court rejected Cygnus’s argument of equivalency, but the argument was not frivolous because Cygnus produced evidence that notches performed the same function as the “weakened line” and achieved a substantially similar result.

Cygnus did not engage in vexatious or unjustified litigation conduct that prolonged the case unnecessarily. The undisputed evidence showed that Cygnus attempted to engage in negotiations before filing its claims, but Medtrica and Steris did not respond to those efforts, choosing instead to file an action for declaratory judgment. Cygnus relied on the advice of counsel before sending cease-and-desist letters to Medtrica and Steris, and it attempted to negotiate in good faith to avoid filing an action for infringement.

Therefore, the motion for attorneys’ fees was denied.

The case is No. C12-538RSL.

Attorneys: Jessica Bromall Sparkman (Jeffer Mangels Butler & Mitchell) for Medtrica Solutions Ltd. Brian L. Repper (St. Onge Steward Johnston & Reens LLC) for Cygnus Medical, LLC.

Companies: Medtrica Solutions Ltd.; Cygnus Medical, LLC; STERIS Corp.

Cases: Patent WashingtonNews