In one of several cases involving Patent Nos. 5,595,568 and 5,735,844 directed to laser hair removal, Candela moved for summary judgment of non-infringement of all claims and invalidity of two. Judge Zobel mostly ruled for Candela, removing all but one claim. There are several notable items in this decision.
One set of asserted claims required cooling the skin “during” application of optical radiation. Candela’s device sprayed cryogen on the skin prior to optical radiation. Palomar argued that some cryogen remained on the skin. Judge Zobel reviewed the dueling expert submissions and found Palomar’s expert’s opinion so conclusory, she granted a motion to strike it. She then held that no reasonable jury could find “from the remaining evidence” that any cryogen remains on the skin.
Lessons:
(1) Avoid drafting claims where infringement is difficult to prove. Easier said than done of course, but this is a perennial problem with medical device / procedure inventions.
(2) Provide evidentiary support for your experts on their opinions will get stricken.
One final point from this decision was an attempt by Palomar to limit Candela’s non-infringement and invalidity position to the testimony of its 30(b)(6) designee who didn’t know whether the claims were infringed or invalid. Judge Zobel declined that invitation, noting that:
These are questions of legal strategy, not fact, and Candela objected in response to the notice of deposition and at the deposition to any inquiry into “issues of law.”
Palomar Medical Tech., Inc. v. Candela Corp., 06-11400-RWZ (D. Mass. Apr. 26, 2011)
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