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NOBELPHARMA AB v. IMPLANT INNOVATIONS

June 19, 1996

NOBELPHARMA AB, Plaintiff,
v.
IMPLANT INNOVATIONS, INC., Defendant.



The opinion of the court was delivered by: DUFF

 On July 23, 1991, Nobelpharma Ab ("NP") sued Implant Innovations, Inc. ("3i"), alleging patent infringement, and 3i counter-claimed, alleging antitrust violations. Between March 14, 1994, and May 4, 1994, this Court held the trial, in which this Court granted 3i's motion for judgment as a matter of law on NP's patent claim, and the jury found for 3i on 3i's antitrust counter-claim. Between May 12, 1994, and January 27, 1995, this Court resolved the issue of inequitable conduct and entered final judgment. On February 16, 1995, NP moved for judgment as a matter of law or, in the alternative, for a new trial. For the reasons discussed below this Court denies NP's motion for judgment as a matter of law and denies its alternative motion for a new trial. This Court, as the parties, proceeds immediately to the analysis.

 I. Analysis

 A. Patent Claim

 1. NP's Motion for a New Trial

 a. Standard of Review

 Fed. R. Civ. P. 50(a)(1) ("Rule 50(a)(1)") governs judgments as a matter of law, and it provides:

 
If during a trial by jury a party has been fully heard on an issue and there is no legally sufficient evidentiary basis for a reasonable jury to find for that party on that issue, the court may determine the issue against that party and may grant a motion for judgment as a matter of law against that party with respect to a claim or defense that cannot under the controlling law be maintained or defeated without a favorable finding on that issue.

 "In granting judgement as a matter of law after presentation of the plaintiff's case, the plaintiff's facts must be accepted as established and all reasonable inferences from those facts must be drawn in the plaintiff's favor." Allied Colloids, Inc. v. Am. Cyanamid Co., 64 F.3d 1570, 1573 (Fed. Cir. 1995); see Burroughs Wellcome Co. v. Barr Labs., Inc., 40 F.3d 1223, 1227 (Fed. Cir. 1994), cert. denied, 133 L. Ed. 2d 724, 116 S. Ct. 771, 116 S. Ct. 771 (1996); see generally, Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 91 L. Ed. 2d 202, 106 S. Ct. 2505 (1986).

 b. Invalidity

 1) Best Mode

 NP argues that it is entitled to a new trial on its infringement claim because this Court "erred in granting 3i's motion for judgment as a matter of law on the issue[] of best mode . . . at the close of Nobelpharma's case in chief." Pl.'s Mot. at 2. NP argues that we "granted 3i's motion because Dr. Branemark testified that the technique used to obtain a micropitted surface on a 'Nobel product' was not described in the '891 patent specification." Id. Yet "there is no evidence in the record that this technique was known at the time the patent application was filed, nor is there any evidence of concealing a technique better than the one described in the patent application." Id. So "a reasonable inference can, and must, be drawn that Dr. Branemark's testimony concerning the technique used to form the micropitted surface on a 'Nobel product' related to developments subsequent to the filing date of the patent application." Id. at 3.

 3i responds that NP is not entitled to a new trial because Branemark "testified that the manufacturing details to produce the claimed micropitted surface were secret and not disclosed." Def.'s Resp. at 1. 3i argues that Branemark's testimony was "unequivocal and dispositive," and 3i cites some of that testimony from trial transcript pages 1621-33, which testimony this Court reproduces below.

 The first set of passages, bracketed below, concern the patent, column 7, lines 31 and following, which address micropitting.

 
Q. How do you get the micropitted surface described in Plaintiff's Trial Exhibit 2 on the surface of the Nobel product?
 
A. Using a [1] special manufacturing procedure which requires very special circumstances. There was a delegation from Japan asking the same question, and I told them that you've got to [2] follow the recipe, which I unfortunately cannot disclose.

 Tr. at 1629.

 The second set of passages, bracketed below, concern the patent, column 4, lines 8 and following, which address micropitting.

 
Q. Is that method of making the micropitted surface disclosed . . . in Plaintiff's Trial Exhibit 2?
 
. . . .
 
A. Yes. Yes, that's part of it, and that is what the Japanese tried to follow, but [1] there were some minor details that were not included here and which proved to be quite important.
 
Q. So there are some [2] details in the manufacturing process that are not stated in this patent at this point and which are important to making the kind of micropitted surface the patent is intended to get, right?
 
A. I guess it might be like that, yes.

 Tr. at 1629-30.

 The third set of passages, bracketed below, concern the patent, column 4, lines 10 and following, which address micropitting.

 
Q. Can you obtain a micropitted surface simply by cutting a piece of titanium at a speed less than 20 meters per minute?
 
A. [1] If you are lucky.
 
Q. You may get that result and you may not, is that it?
 
A. Yes. That was a problem, you see.
 
Q. What factors can cause you to fail to get micropitting even though you were cutting the metal at less than 20 meters per minute?
 
A. In fact, [2] any of the small detailed recipes that I discussed before but did not specify.

 Tr. at 1631-32.

 The fourth passage purportedly concerns the standardized procedures for making the implants. Although 3i cites several pages of transcript, only two of the pages concern standardized procedures.

 
A. Yes, yes. Well, I don't know. I guess it was intended to be included in the biologically flawless material, but I don't know. The requisite, of course, is that the bulk material should provide this final result of the surface.
 
Q. What year did the standardized procedure you just referred to come into being?
 
A. I don't remember the years now, but it's in the different reports and some of them are quite complicated when it comes to figures, but there was a development period from '65, introductory period from '65 to '71 -- through '71, I think. So from '72 the clinical procedure with healing time, et cetera, was more standardized.
 
Q. So in what year did the standardized procedure come into being?
 
A. I guess it was in 1972.

 Tr. at 1632-33.

 Title 35 U.S.C. § 112 ("§ 112") governs the best mode requirement, and, in relevant part, it provides: "The specification . . . shall set forth the best mode contemplated by the inventor of carrying out his invention." See Chemcast Corp. v. Arco Indus. Corp., 913 F.2d 923, 926 (Fed. Cir. 1990). "The purpose of the best mode requirement is to 'restrain inventors from applying for patents while at the same time concealing from the public preferred embodiments of the invention which they have in fact conceived.'" Transco Prod., Inc. v. Performance Contracting Inc., 38 F.3d 551, 560 (Fed. Cir. 1994), cert. denied, 130 L. Ed. 2d 1069, 115 S. Ct. 1102 (1995), (quoting In re Gay, 50 C.C.P.A. 725, 309 F.2d 769, 772 (CCPA 1962)). "A holding of invalidity for failure to disclose best mode requires clear and convincing evidence that the inventor both knew of and concealed a better mode of carrying out the claimed invention than was set forth in the specification." Id. (citing Scripps Clinic & Research Foundation v. Genentech, Inc., 927 F.2d 1565, 1578 (Fed. Cir. 1991)).

 In Transco, the court followed the Chemcast court's description of the proper best mode analysis, which has two steps. "The first [step], which is wholly subjective, involves determining whether the inventor knew of a mode of practicing the claimed invention that he considered to be better than any other at the time he filed his application." Id. at 560. "If the inventor contemplated such a preferred mode, the second step is to compare what he knew with what he disclosed to determine whether the disclosure is adequate to enable one skilled in the art to practice the best mode." Id. "The second step, which involves assessing the adequacy of the disclosure, is largely an objective inquiry that depends upon the scope of the claimed invention and the level of skill in the art." Id.

 This Court finds NP's argument unpersuasive. The testimony reproduced above demonstrates that when Branemark filed his patent application, he contemplated a best mode of practicing his invention, but his disclosures were inadequate to enable one skilled in the art to practice that best mode. This Court notes, however, that its finding excludes the testimony purportedly concerning standardized procedures, which 3i misinterprets. In any event, as this Court stated at trial, Branemark "did say that the method of making the implant micropits was a secret not disclosed in the patent." Tr. at 2292. As this Court further stated, "Branemark said important details were not produced. The sentence is powerful, unequivocal, unambiguous, and devastating to the plaintiff's case." Tr. at 2295. This Court believed it then, and this Court believes it now. And in light of it, this Court did not err when it granted 3i's motion for judgment as a matter of law, even though the standard of review of review is high and patents are presumed valid. Therefore, NP is not entitled to a new trail on its patent claim.

 2) Other Grounds

 This Court does not need to reach further, but it does on one issue, whether 3i can raise new grounds to support its motion for judgment as a matter of law. This Court reaches further because both parties raise new grounds at various points.

 3i brought its motion pursuant to Rule 50(a), which, in relevant part, provides that the motion "may be made at any time before submission of the case to the jury. Such a motion shall specify the judgment sought and the law and facts on which the moving party is entitled to judgment." Rule 50(a)(2). "Failure to state the grounds or the motion with specificity may provide grounds for denying the motion. But the requirement is not a technical one." 5A James Moore, Moore's Federal Practice P 50.04 (2d ed. 1995). "Its purposes are twofold: (1) to assure that the trial court has an adequate basis for its decision; and (2) to afford the adverse party the opportunity to correct any possible infirmities in the proof presented." Id.; see McKinnon v. City of Berwyn, 750 F.2d 1383, 1388-89 (7th Cir. 1984).

 This Court finds 3i's argument unpersuasive. If 3i's new grounds supplement its Rule 50(a) motion, those grounds are improper for two reasons. First, they are untimely because 3i did not raise them before submission of the case to the jury. Second, and this is likely related to the first reason, they are contrary to the motion's purpose because they come so late that NP does not have the opportunity to correct any possible infirmities in the proof. If 3i's new grounds constructively amount to making a new motion under Rule 50(b), they are also improper, this time because this Court can grant a post-trial motion for judgment only on grounds advanced in the pre-verdict motion. 5A Moore's Federal Practice P 50.08; Fed. R. Civ. P. 50(b) advisory committee's note to the 1991 Amendment; see Coleman v. Lane, 1995 U.S. Dist. LEXIS 4626, 1995 WL 170025, *2 (N.D. Ill. April 7, 1995), vacated on other grounds, 1996 U.S. Dist. LEXIS 4354, 1996 WL 167044 (N.D. Ill. Apr. 5, 1996).

 3i cites to contrary authority, Data Cash Systems, Inc. v. JS&A Group, Inc., 628 F.2d 1038 (7th Cir. 1980), which wrote that the "prevailing party in the lower court may rely on any ground that supports the decision." Id. at 1041; cf. Creek v. Village of Westhaven, 80 F.3d 186, 1996 U.S. App. LEXIS 4916, *13 (7th Cir. Mar. 19, 1996) (writing that the "defendants argue as is their right that there are alternative grounds, grounds not reached by the district judge but not waived and therefore available to support the judgment as they are good grounds"). 3i's cite to Data Cash is inapposite because it concerns appellate review, and this Court is, of course, not an appellate court. Therefore, 3i can raise no new grounds to support its motion.

 This Court denies NP's motion for a new trial on its patent claim.

 B. Antitrust Counterclaim

 1. NP's Motion for Judgment as a Matter of Law

 a. Standard of Review

 In Deimer v. Cincinnati Sub-Zero Prods., Inc., 58 F.3d 341 (7th Cir. 1995), the Seventh Circuit expressed the standard of review governing "the adjudication of a motion for a judgment as a matter of law." Id. at 343. The court wrote:

 
If reasonable persons could not find that the evidence justifies a decision for a party on each essential element, the court should grant judgment as a matter of law -- before trial under rule 56, later under rule 50, and use the same federal standard each time. By linking the standard for summary judgment to the standard for overturning a verdict, Anderson and Celotex leave no other option. We now adopt the federal reasonable person standard across ...

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