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Koninklijke Philips N.V. v. Zoll Medical Corp.

United States District Court, D. Massachusetts

June 26, 2017

Koninklijke Philips N.V. and Philips Electronics North America Corporation, Plaintiffs,
v.
Zoll Medical Corporation, Defendant.

          MEMORANDUM & ORDER

          Nathaniel M. Gorton United States District Judge

         This patent case involves automated external defibrillators (“AEDs”) and components thereof. In June, 2010, plaintiffs Koninklijke Philips, N.V. and Philips Electronics North America Corporation (collectively, “plaintiffs” or “Philips”) filed suit against defendant Zoll Medical Corporation (“defendant” or “Zoll”) for infringement of the Philips waveform patents (the '454, '905, '212 and '978 patents), self-test patents (the '460 and '374 patents) and CPR instructions patent (the '785 patent). Zoll denied infringement and counterclaimed for infringement of its electrode patent (the '526 patent) and defibrillator patent (the '187 patent). This Court bifurcated the liability and damages phases of the case.

         Pending before the Court are Zoll's motion for summary judgment of no willful infringement and Philips's motions for summary judgment to preclude Zoll from collecting damages 1) on foreign sales of a certain electrode pad product and 2) for a particular five-month period in 2007. For the reasons that follow, Zoll's motion will be allowed, Philips's motions will be denied.

         I. Background

         In December, 2013, after a vigorously contested jury trial, the Court submitted the issues of patent validity and infringement to the jury. With respect to Philips's patents, the jury did not address the validity of the '212 patent, which was not contested, but otherwise found that all of the contested claims in the '212, '454, '905 and '460 patents were valid and directly infringed by Zoll's products and that all of the disputed claims in Philips's '374 patent were valid and some were directly infringed.

         With respect to the Zoll patents, the jury found that the disputed claims of the '187 and '526 patent were valid, all of the claims of the '187 patent were directly infringed and most of the disputed claims of the '526 patent were directly infringed.

         This Court denied both parties' motions for judgment as a matter of law and both parties appealed.

         In January, 2015, the Court granted Zoll's motion to continue the damages trial pending the appeal even though the parties had already exchanged damages expert reports. In July, 2016, the Federal Circuit Court of Appeals affirmed, in part, reversed, in part, vacated, in part, and remanded the case for a new liability trial on the contested claims in Zoll's '526 electrode patent. This Court lifted the stay and scheduled the trial on the sole remaining liability issue (relative to Zoll's '526 patent) and damages to commence on July 24, 2017.

         Early in 2015, Zoll requested the PTO to reexamine the validity of the claims based on the Philips' waveform '454, '905 and '212 patents. The PTO did so and issued final rejections of the claims with respect to the '454 and '212 patents. Philips appealed those rejections to the Patent Trial and Appeal Board and, in September, 2016, Zoll again moved to stay the damages trial pending the completion of the reexamination. Zoll also moved to set deadlines for Philips to seek leave to file any amended or new damages expert reports. This Court declined to stay the case but allowed the parties to file new or amended damages expert reports.

         Pursuant to a briefing schedule set by this Court in November, 2016, the parties filed three motions for summary judgment (one by Zoll and two by Philips) in March, 2017. This memorandum addresses those pending motions.

         II. The Parties' Motions for Summary Judgement

         A. Legal Standard

         The role of summary judgment is “to pierce the pleadings and to assess the proof in order to see whether there is a genuine need for trial.” Mesnick v. Gen. Elec. Co., 950 F.2d 816, 822 (1st Cir. 1991). The burden is on the moving party to show, through the pleadings, discovery and affidavits, “that there is no genuine dispute as to any material fact and that the movant is entitled to judgment as a matter of law.” Fed.R.Civ.P. 56(a). A fact is material if it “might affect the outcome of the suit under the governing law.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). A genuine issue of material fact exists where the evidence with respect to the material fact in dispute “is such that a reasonable jury could return a verdict for the nonmoving party.” Id.

         Once the moving party has satisfied its burden, the burden shifts to the non-moving party to set forth specific facts showing that there is a genuine, triable issue. Celotex Corp. v. Catrett, 477 U.S. 317, 324 (1986). The Court must view the entire record in the light most favorable to the non-moving party and indulge all reasonable inferences in that party's favor. O'Connor v. Steeves, 994 F.2d 905, 907 (1st Cir. 1993). Summary judgment is appropriate if, after viewing the record in the non-moving party's favor, the Court determines that no genuine issue of material fact exists and that the moving party is entitled to judgment as a matter of law.

         B. Application

         1. Defendant's Motion for Summary Judgment of No Willful Infringement

         Defendant Zoll moves for summary judgment that it did not willfully infringe claim 51 of United States Patent No. 5, 607, 454 (“the '454 patent”) and claims 4 and 8 of United States Patent No. 5, 749, 905 (“the '905 patent”).

         a. Factual background

         Philips is the owner of several patents-in-suit, including the '454 patent and the'905 patent. On or about November 17, 2008, Philips first contacted Zoll about potential infringement of at least some of those patents.[1] Litigation ensued and on December 19, 2013, a jury found, inter alia, Zoll not liable for contributory infringement or induced infringement of claim 51 of the '454 patent and claims 4 and 8 of the '905 patent.

         Philips appealed the jury's verdict with respect to its finding of no contributory infringement. The Federal Circuit Court of Appeals affirmed that finding in an opinion dated July 28, 2016. See generally Koninklike ...


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