Defendant Deflects Liability In Laser Treatment Patent Case

In one of a series of patent suits involving energy treatment (ablation) of internal organs (such as prostate tissue, veins, etc.), Judge Ponsor disposed of all claims in a case before him on summary judgment.  While asserted Patent No. 5,428,699 was declared valid, the defendant escaped liability on patent infringement and other secondary claims. 

Opening his 40 page decision, Judge Ponsor eloquently (and with a certain amount of resignation) asked: 

This intricate and lavishly briefed piece of patent litigation turns on the proper construction of a single two-letter word: “on.”  One may say that a dictionary rests “on” a table but, if an apple is then placed on the dictionary, is it, too, “on” the table? 

For purposes of this case, the answer was no. 

Judge Ponsor granted summary judgment of non-infringement because the accused device inserted a cap between a transmitting surface and a waveguide tip but the claim required the transmitting surface “on” the waveguide tip.  This decision comports with a construction of the asserted claims adopted by another district court, with which Judge Ponsor agreed. 

Multiple other motions were also decided in the lengthy opinion.  Ultimately the defendant got the better end of the stick. 

Judge Ponsor granted summary judgment of no anticipation based on certain references also considered by the PTO during reexam.  In a “timing is everything” moment, on the day Judge Ponsor heard argument on summary judgment, the PTO reaffirmed the validity of the patent based on the main reference asserted in court.  Judge Ponsor also granted summary judgment of non-obviousness based in part on the defendant’s lackluster assertion of the defense (comprised of two paragraphs and a bunch of claim charts).  A “bizarrely” asserted written description defense (where the defendants alleged that the accused product failed to meet the specification of the patent) met a similar fate. 

As to the non-patent claims, the defendants won summary judgment on a false advertising count because the plaintiffs could not show any injury as a result of the use of a purportedly false graph during various sales presentations.  Claims for 93A and unfair competition fell for similar reasons. 

American Medical Systems, Inc. v. Biolitec, Inc., 08-30061-MAP (D. Mass. Mar. 30, 2011)