Zoll Medical and Philips (NYSE:PHG) are slated to go to trial next month in a patent infringement case involving their respective automated external defibrillator technologies.
Philips, the Dutch conglomerate whose healthcare division is based in Andover, Mass., sued its neighbor in nearby Chelmsford in June 2010, alleging infringement of 15 AED patents. Zoll countered with a lawsuit of its own a month later, accusing Philips of infringing 5 Zoll AED patents. The cases were later consolidated and scheduled for trial Dec. 2, according to court documents.
The medical device companies filed a series of motions for summary judgment in the U.S. District Court for Massachusetts, but Judge Nathaniel Gorton earlier this month denied all of them except a joint motion to nix certain claims.
Gorton shot down a Philips motion for invalidity of 1 of the Zoll patents, "Semiautomatic defibrillator with heart rate alarm driven by shock advisory algorithm" or the ‘187 patent, and also denied a motion for non-infringement of the ‘187 patent.
"The court finds that Philips has failed to carry its ‘especially heavy burden’ of proving invalidity by anticipation at this stage in the litigation as a reasonable jury could find that the patent was not anticipated," the judge wrote, according to court documents.
Philips also moved to have Gorton declare invalid another Zoll patent, "Combined defibrillation and pacing electrode" or the ‘526 patent, for indefiniteness concerning the proper temperature used to test electrical resistance in a gel used with defibrillator electrodes.
"The court finds that Philips has failed to make the requisite clear and convincing showing of indefiniteness. Quite simply, there is no suggestion that a person of ordinary skill in the art would not know to test at room temperature," Gorton wrote.
A Philips bid to strike Zoll’s claims of inequitable conduct was also denied.
"Zoll alleges that Philips engaged in inequitable conduct by making a false declaration with respect to the self-test patents and by failing to disclose material information to the patent examiner with respect to the waveform patents," according to the documents. "The court finds that, given the disputed issues of fact, a reasonable jury could find, but would not be required to find, that the single most reasonable inference is that Philips acted with the specific intent to deceive the [U.S. Patent & Trademark Office]."
Turning to Zoll’s motion for laches, or an assertion that Philips waited too long to claim infringement, Gorton ruled that the issues involved should be decided by jury.
"Zoll has moved for summary judgment of laches on the grounds that Philips waited 11 years after Zoll first marketed and sold the biphasic waveform technology and 9 years after Zoll first marketed and sold a defibrillator with the allegedly infringing features to bring an infringement suit," he wrote. "This highly technical dispute is not susceptible to summary judgment because it involves disputed facts and questions of witness credibility. Accordingly, the court will deny Zoll’s motion for summary judgment of laches."
Zoll also moved to challenge the claim dates on 2 of the patents, "External defibrillator with automatic self-testing prior to use" or the ‘374 patent and "Method for performing self-test in a defibrillator" or the ‘460 patent, but Gorton shot that bid down too.
"The main issue underlying this motion is whether Philips is entitled to claim an earlier priority date for its ‘374 and ‘460 patents," he wrote. "Zoll has not carried its burden of presenting clear and convincing evidence that Philips is not entitled to the earlier filing date and therefore is not entitled to summary judgment in its favor. As the priority date remains in dispute, summary judgment of anticipation is unwarranted."
"Zoll also argues that its accused products do not infringe because claims 66 and 73 of the ‘374 patent require ‘recalibrating’ as part of the self-testing process and Zoll’s products do not recalibrate during self-tests. Philips has, however, presented evidence that suggests that Zoll’s products undergo a process where ‘bad’ data is replaced with ‘good’ data," Gorton added. "After construing the facts in favor of Philips as the non-moving party, the court finds that a reasonable jury could determine that such a process entailed recalibration and therefore declines to enter summary judgment in Zoll’s favor."
Another Zoll motion sought a declaration of non-infringement of 4 "waveform patents," arguing that its method for generating defibrillation shock waveforms "involve a fundamentally different method," according to the documents.
"Defibrillator technology is undoubtedly complex but the court finds it squarely within the realm of possibility that a reasonable jury could find that, in fact, Zoll’s ‘calculating’ infringes on Philips’ patent covering the act of ‘measuring.’ As a result, it will not grant summary judgment on this motion," Gorton ruled.
Finally, a Zoll motion to have 2 Philips patents declared invalid was denied.
"A reasonable jury could find that the written description is satisfactory," the judge wrote. "While Zoll may be able to proffer evidence showing that such provisions do not support claim 51 at trial, it has not made a sufficiently clear and convincing showing to warrant summary judgment in its favor."
