Zimmer Surgical, Inc. v. Stryker Corp. (365 F. Supp. 3d 466, 2019)

ANDREWS, U.S. DISTRICT JUDGE:

Currently pending before the Court are the parties' motions for summary judgment (D.I. 309, 310, 311, 312, 313, 316, 356, 411) and Daubert motions to exclude expert testimony and opinions. (D.I. 317, 321, 322, 327). The parties have fully briefed the issues (D.I. 314, 318, 320, 323, 324, 328, 351, 353, 355, 359, 360, 361, 386, 387, 389, 391, 392, 393, 411, 413, 415). The Court heard helpful oral argument on January 22, 2019. (D.I. 417).

I. BACKGROUND

On August 8, 2016, Zimmer Surgical, Inc. and Dornoch Medical Systems, Inc. (collectively, "Zimmer") filed suit against Stryker Corporation and Stryker Sales Corporation (collectively, "Stryker") for infringement of U.S. Patent No. RE 44,920 ("the '920 patent"). (D.I. 1). On May 22, 2018, Stryker filed counterclaims against Zimmer Surgical, Inc., Dornoch Medical Systems, Inc., Zimmer Inc., and Zimmer U.S. Inc. (also collectively, "Zimmer") for infringement of U.S. Patent No. 9,579,428 ("the '428 patent") which was applied for and issued during the pendency of this suit. (D.I. 251).

The '920 patent is a reissue of U.S. Patent No. 7,892,420 ("the '420 patent"). It issued on June 3, 2014 and is directed to a fluid waste management system combining a movable waste fluid collection cart with a waste fluid disposal unit. The '920 patent claims priority to U.S. Patent No. 6,893,425 ("the '425 patent"). The '420 patent was filed as a continuation-in-part of the application for U.S. Patent No. 7,258,711 ("the '711 patent"). The '711 patent was filed as a divisional of application no. 10/090,221 on March 4, 2002, which issued as U.S Patent No. 6,893,425 ("the '425 patent"). The application for the '425 patent was published as Publication No. US 2003/0164600 ("the '600 publication").

In 2013, Dornoch sought to reissue the '420 patent and add new claims 15-41. These reissue claims are directed to a "system for handling waste fluid" that has two containers, each "being configured to collect liquid waste from the patient." ( '920 patent, cls. 15, 29). Zimmer asserts only new reissue claims against Stryker. Zimmer alleges that Stryker's Neptune 2 and Neptune 3 waste collection systems infringe the '920 patent.

The '428 patent issued on February 28, 2017 during the pendency of this litigation. The '428 patent is directed to a waste collection system with a removable intake manifold that prevents the release of uncollected waste still in the manifold. ( '428 patent col. 1:31-37). Stryker accuses Dornoch's Transposal® UltrafleX Fluid Waste Management System ("the Ultraflex system") and IntelliCart system of infringing claims 1-6, 10, 14-16, 20, 23-25, 28 and 29 of the '428 patent. (D.I. 359 at vii).

The parties now move for summary judgment on a multitude of issues (D.I. 309, 310, 311, 312, 313, 316, 356) and for exclusion of certain expert testimony and opinion (D.I. 317, 321, 322, 327).

II. LEGAL STANDARD

A. Summary Judgment

"The court shall grant summary judgment if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law." Fed. R. Civ. P. 56(a). The moving party has the initial burden of proving the absence of a genuinely disputed material fact relative to the claims in question. Celotex Corp. v. Catrett , 477 U.S. 317, 330, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). Material facts are those "that could affect the outcome" of the proceeding, and "a dispute about a material fact is 'genuine' if the evidence is sufficient to permit a reasonable jury to return a verdict for the nonmoving party." Lamont v. New Jersey, 637 F.3d 177, 181 (3d Cir. 2011) (quoting Anderson v. Liberty Lobby, Inc. , 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986) ). The burden on the moving party may be discharged by pointing out to the district court that there is an absence of evidence supporting the non-moving party's case. Celotex , 477 U.S. at 323, 106 S.Ct. 2548.

The burden then shifts to the non-movant to demonstrate the existence of a genuine issue for trial. Matsushita Elec. Indus. Co. v. Zenith Radio Corp. , 475 U.S. 574, 586-87, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986) ; Williams v. Borough of West Chester, Pa. , 891 F.2d 458, 460-61 (3d Cir. 1989). A non-moving party asserting that a fact is genuinely disputed must support such an assertion by: "(A) citing to particular parts of materials in the record, including depositions, documents, electronically stored information, affidavits or declarations, stipulations ..., admissions, interrogatory answers, or other materials; or (B) showing that the materials cited [by the opposing party] do not establish the absence ... of a genuine dispute ...." Fed. R. Civ. P. 56(c)(1).

When determining whether a genuine issue of material fact exists, the court must view the evidence in the light most favorable to the non-moving party and draw all reasonable inferences in that party's favor. Scott v. Harris, 550 U.S. 372, 380, 127 S.Ct. 1769, 167 L.Ed.2d 686 (2007) ; Wishkin v. Potter , 476 F.3d 180, 184 (3d Cir. 2007). A dispute is "genuine" only if the evidence is such that a reasonable jury could return a verdict for the non-moving party. Anderson , 477 U.S. at 247-49, 106 S.Ct. 2505. If the non-moving party fails to make a sufficient showing on an essential element of its case with respect to which it has the burden of proof, the moving party is entitled to judgment as a matter of law. See Celotex Corp. , 477 U.S. at 322, 106 S.Ct. 2548.

B. Daubert

Federal Rule of Evidence 702 sets out the requirements for expert witness testimony and states:

A witness who is qualified as an expert by knowledge, skill, experience, training, or education may testify in the form of an opinion or otherwise if: (a) the expert's scientific, technical, or other specialized knowledge will help the trier of fact to understand the evidence or to determine a fact in issue; (b) the testimony is based on sufficient facts or data; (c) the testimony is the product of reliable principles and methods; and (d) the expert has reliably applied the principles and methods to the facts of the case.

Fed. R. Evid. 702. The Third Circuit has explained:

Rule 702 embodies a trilogy of restrictions on expert testimony: qualification, reliability and fit. Qualification refers to the requirement that the witness possess specialized expertise. We have interpreted this requirement liberally, holding that a broad range of knowledge, skills, and training qualify an expert. Secondly, the testimony must be reliable; it must be based on the "methods and procedures of science" rather than on "subjective belief or unsupported speculation"; the expert must have "good grounds" for his or her belief. In sum, Daubert holds that an inquiry into the reliability of scientific evidence under Rule 702 requires a determination as to its scientific validity. Finally, Rule 702 requires that the expert testimony must fit the issues in the case. In other words, the expert's testimony must be relevant for the purposes of the case and must assist the trier of fact. The Supreme Court explained in Daubert that Rule 702's "helpfulness" standard requires a valid scientific connection to the pertinent inquiry as a precondition to admissibility.

By means of a so-called "Daubert hearing," the district court acts as a gatekeeper, preventing opinion testimony that does not meet the requirements of qualification, reliability and fit from reaching the jury. See Daubert ("Faced with a proffer of expert scientific testimony, then, the trial judge must determine at the outset, pursuant to Rule 104(a) of the Federal Rules of Evidence whether the expert is proposing to testify to (1) scientific knowledge that (2) will assist the trier of fact to understand or determine a fact in issue.").

Schneider ex rel. Estate of Schneider v. Fried, 320 F.3d 396, 404-05 (3d Cir. 2003) (cleaned up).

III. DISCUSSION

A. SUMMARY JUDGMENT

1. The '920 Patent is Entitled to a Priority Date of March 4, 2002

Zimmer moves for summary judgment that the '920 patent is entitled to a priority date of March 4, 2002. (D.I. 314 at 12). Stryker moved for summary judgment of invalidity because it argues that the '920 claims are not entitled to a priority date earlier than 2006 or, alternatively, August 2004. (D.I. 320 at 5, 7). The parties agree that entitlement to priority is a question of law to be determined at summary judgment and that no material disputes of fact exist. (D.I. 417 at 6:11-13, 12:3-7; D.I. 314 at 13 (citing case law) ). Stryker asserts that Zimmer is not entitled to a March 4, 2002 priority date for two reasons: (1) the priority chain was broken when the application for the '420 patent (of which the '920 patent is a reissue) did not reference the original '425 patent application, and (2) the disclosure of the original application does not provide the required § 112 written description support for the asserted claims. (D.I. 320 at 5, 7; D.I. 359 at 8, 10). Zimmer argues that the '420 patent does not break the priority chain and that Stryker has failed to identify a single claim limitation in the asserted claims that lacks support in the original disclosure. (D.I. 314 at 13; D.I. 351 at 2, 5). I agree with Zimmer.

Where patent applicants seek a patent on an invention previously disclosed consistent with 35 U.S.C. § 112(a), the applicant is entitled to claim the priority date of the earlier-filed application. 35 U.S.C. § 120. Patent applicants seeking to claim the benefit of an earlier priority date are required to include with the application a "specific reference to the earlier filed application."Id. The " 'specific reference' requirement mandates each [intermediate] application in the chain of priority to refer to the prior applications." Medtronic CoreValve LLC v. Edwards Lifesciences Corp. , 741 F.3d 1359, 1363 (Fed. Cir. 2014) (internal citations omitted). After a patent issues, a patentee may request a certificate of correction to correct "a mistake of clerical or typographical nature, or of minor character." 35 U.S.C. § 255. Claims in continuation-in-part applications may receive different priority dates. Waldemar Link v. Osteonics Corp. , 32 F.3d 556, 558 (Fed. Cir. 1994).

First, the '420 patent application's failure to reference the original '425 patent does not break the priority chain of the '920 patent. Priority claims may be corrected by filing a reissue application under 35 U.S.C. § 251. See Lucent Techs. Inc. v. Gateway, Inc. , 470 F.Supp.2d 1163, 1173 (S.D. Cal. 2007) (finding change in priority claim not broadening reissue); see also Fontijn v. Okamoto, 518 F.2d 610, 621 (Cust. & Pat. App. 1975) ("[A] reissue application filed for the sole purpose of perfecting a claim to priority does not broaden the scope of the claims of the original patent and is not in contravention of the requirements of section 251 even though filed more than two years after the patent grant.") (holding acknowledged in Medrad, Inc. v. Tyco Healthcare Grp. LP, 466 F.3d 1047, 1051 (Fed. Cir. 2006) ). As priority chains can be corrected through reissue, it is illogical to determine that the application for the now-surrendered patent breaks the priority chain. Such a determination would defeat the legally recognized use of a reissue application to correct the priority chain in all cases.

Furthermore, longstanding PTO practice "has allowed patentees to use section 255 certificates of correction to correct section 120 priority chains since at least as early as 1976." Word to Info, Inc. v. Google Inc. , 140 F.Supp.3d 986, 995 (N.D. Cal. 2015) (collecting cases). "[I]nsofar as the PTO is concerned, a section 255 certificate of correction can be used to correct a section 120 chain of priority defect even after patent issuance." Id. Thus, Stryker's emphasis on the distinction between patents and applications is misplaced. Stryker cites cases concerning situations where the patentee did not attempt to correct the priority chain, either through reissue or a certificate of correction. See Nat. Alts. Int'l, Inc. v. Iancu, 904 F.3d 1375 (Fed. Cir. 2018) ; Medtronic, 741 F.3d 1359. These cases say little about whether a certificate of correction to a reissue patent is insufficient to correct the patent's priority chain.

Here, Zimmer obtained a certificate of correction for its priority claim in the reissued '920 patent. As priority claims may be corrected through reissue, the failure of the '420 patent's application to make the "specific references" required by § 120 cannot alone be sufficient to break the '920 patent's priority chain. Moreover, a certificate of correction is a legally acceptable way to correct unintentional errors in a patent's priority chain, even after the patent has been issued. Word to Info, 140 F.Supp.3d at 993-94. Therefore, I determine that the '920 patent has an unbroken priority chain to the '425 patent application date, March 4, 2002.

Second, Zimmer has shown that the disclosure of the original application for the '425 patent provides the required § 112 written description support for the asserted claims of the '920 patent. Claims in a continuation-in-part application will be "entitled to the benefit of an earlier filed application only if the disclosure of the earlier application provides support for the claims ... as required by 35 U.S.C. § 112." PowerOasis, Inc. v. T-Mobile USA, Inc. , 522 F.3d 1299, 1306 (Fed. Cir. 2008) (quoting In re Chu, 66 F.3d 292, 297 (Fed. Cir. 1995) ); see also Augustine Med., Inc. v. Gaymar Indus., Inc. , 181 F.3d 1291, 1302-03 (Fed. Cir. 1999) ("Different claims of [a CIP] application may therefore receive different effective filing dates.... Subject matter that arises for the first time in [a] CIP application does not receive the benefit of the filing date of the parent application."). The disclosure of the prior application must "convey with reasonable clarity to those skilled in the art that, as of the filing date sought, [the inventor] was in possession of the invention " as later claimed.

Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991) (emphasis in original).

Stryker points to the inclusion of a new embodiment in the specification as evidence that the original disclosure would not satisfy the written description requirement. (D.I. 320 at 5; D.I. 359 at 11). However, the test is not whether the claims may also find support in new matter, but whether the original disclosure is sufficient to support the claims. PowerOasis, 522 F.3d at 1306. Here, I determine that the original disclosure of the '425 patent provides sufficient written description for the reissue claims.

Both sides agree that the '600 publication would anticipate the '920 patent. (D.I. 314 at 17; D.I. 359 at 17). Anticipation requires "each and every limitation [to be] found either expressly or inherently in a single prior art reference." King Pharms., Inc. v. Eon Labs., Inc. , 616 F.3d 1267, 1274 (Fed. Cir. 2010). Stryker asserts that there is a distinction between anticipation and written description, whereby a reference may anticipate without satisfying § 112. (D.I. 320 at 7). However, Stryker has not demonstrated that support for the reissue claims is lacking here. Stryker merely points to the existence of new matter in the specification and argues that the claims are therefore not supported under PowerOasis. (D.I. 320 at 6). But PowerOasis is not determinative here. There, the original application did not provide a written description of "customer interface" as set forth in the asserted claims. PowerOasis, 522 F.3d at 1307-08. There, in the continuation-in-part application, a new embodiment describing a vending machine with a user interface located remotely from the vending machine influenced the construction of the claim term "customer interface" to encompass more than the "user interface" located in the vending machine in the original application. Id. at 1307-08. Here, however, Stryker points to elements that could be added to the cart on top of the claimed elements as evidence that the previous disclosure does not support the claims. These additional elements are claimed separately from the asserted claims. (See, e.g. , '920 patent, cl. 1). The original disclosure of the '425 patent supports each claim element of the asserted reissue claims in the '920 patent and the construction of those claim elements. Nor is the identification of a new utility enough for written description to fail where the claimed structure is the same. In re Kirchner, 305 F.2d 897, 903-04 (C.C.P.A. 1962). Therefore, the asserted claims of the '920 patent are entitled to priority date of March 4, 2002 and are not invalid based on art after that date.

2. Stryker has Not Demonstrated an Absence of Genuine Dispute of Fact as to Invalidity Under Section 112

Stryker moves for summary judgment of invalidity for lack of written description because the Asserted Claims (1) "do not recite any mechanism to regulate or control vacuum in the system required for the system to operate" and (2) use improper functional language. (D.I. 320 at 14-15). Zimmer argues that Stryker seeks to impose a rejected "essential element" test upon patentees and that a person of ordinary skill in the art would understand the scope of the functional language "independently adjustable" with reasonable certainty. (D.I. 351 at 9-10).

The written description requirement contained in 35 U.S.C. § 112, ¶ 1 requires that the specification "clearly allow persons of ordinary skill in the art to recognize that the inventor invented what is claimed." Ariad Pharm., Inc., v. Eli Lilly & Co. , 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc) (cleaned up). "In other words, the test for sufficiency is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date." Id. The written description inquiry is a question of fact. See id. Although it is a question of fact, "[c]ompliance with the written description requirement ... is amenable to summary judgment in cases where no reasonable fact finder could return a verdict for the non-moving party." PowerOasis, 522 F.3d at 1307. "A party must prove invalidity for lack of written description by clear and convincing evidence." Vasudevan Software, Inc. v. MicroStrategy, Inc. , 782 F.3d 671, 682 (Fed. Cir. 2015).

A unique branch of § 112 case law provides that where the specification clearly limits the scope of the inventions in ways that the claims do not, the patent is invalid for lack of written description. ICU Med., Inc. v. Alaris Med. Sys., Inc. , 558 F.3d 1368, 1378 (Fed. Cir. 2009) ("specification describes only medical valves with spikes" and the claims did not include a spike limitation); Gentry Gallery, Inc. v. Berkline Corp. , 134 F.3d 1473, 1479 (Fed. Cir. 1998) ("original disclosure clearly identifies the console as the only possible location of the control" but claims did not limit the location of the controls). Stryker argues that the asserted claims of the '920 patent are invalid for lack of written description under this line of cases.

Specifically, Stryker argues that "every single embodiment of the [fluid collection] cart in the [ '920 patent] includes a vacuum control system (in the form of a valve control system and regulator) to regulate vacuum in the cart." (D.I. 320 at 14). However, the '920 specification only recites a single embodiment of the fluid collection cart. ( '920 patent, col. 4:56-6:36). This is unlike both ICU Medical and Gentry Gallery where the specification repeatedly made clear that the spikes in ICU Medical and the console location in Gentry Gallery were critical to the inventor's contribution and therefore to the scope of the claims. Gentry Gallery, 134 F.3d at 1479 ; ICU Med., 558 F.3d at 1378. Here, the independent claims recite "at least one of the suction ports being configured to provide at least two different levels of suction" and "a level of suction at one of the suction ports being independently adjustable of a level of suction at another of the suction ports." ( '920 patent, cls. 15, 29). The specification provides an example of how to achieve these claims-by using a valve control system and regulator. ( '920 patent col. 5:44-49). "It is well established that 'it is not necessary to claim in a patent every device required to enable the invention to be used.' " Asyst Techs., Inc. v. Empak, Inc. , 268 F.3d 1364, 1371 (Fed. Cir. 2001) (quoting Hughes Aircraft Co. v. United States, 640 F.2d 1193, 1197 (Ct. Cl. 1980) ). Unlike the spikeless claims in ICU Medical and the console location in Gentry Gallery, here, the exclusion of the valve control system and regulator from the independent claims neither changes how the system functions nor broadens the scope of the invention. Therefore, I determine that Stryker has not demonstrated that a reasonable jury could not determine that claims 15 and 29 of the '920 patent have sufficient § 112 support.

Stryker raises a second § 112 issue: whether claim 29 of the '920 patent is invalid for indefiniteness as a result of improper functional claiming. (D.I. 320 at 15). Specifically, Stryker contends that the level of suction being "independently adjustable" in claim 29 is improper functional claiming under Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1255-56 (Fed. Cir. 2008). Zimmer asserts that claim 29 is not indefinite because " 'independently adjustable' is not a relative term of degree, but instead an absolute statement about the vacuum, which one of ordinary skill would understand with reasonable certainty." (D.I. 351 at 11).

The Federal Circuit has stated that when determining whether functional language is indefinite "[w]hat is needed is a context-specific inquiry into whether particular functional language actually provides the required reasonable certainty." BASF Corp. v. Johnson Matthey Inc. , 875 F.3d 1360, 1366 (Fed. Cir. 2017). "[C]ase law is clear that an applicant is not required to describe in the specification every conceivable and possible future embodiment of his invention." Rexnord Corp. v. Laitram Corp. , 274 F.3d 1336, 1344 (Fed. Cir. 2001). "[A] vice of functional claiming occurs 'when the inventor is painstaking when he recites what has already been seen, and then uses conveniently functional language at the exact point of novelty.' " Halliburton, 514 F.3d at 1255 (quoting Gen. Elec. Co. v. Wabash Appliance Corp. , 304 U.S. 364, 371, 58 S.Ct. 899, 82 L.Ed. 1402 (1938) ).

Here, the claim language "independently adjustable" would inform a person of ordinary skill in the art of the claim scope with reasonable certainty as it is not a relative term of degree, but rather a binary proposition. The suction level at one suction port must be able to be adjusted independent of another. This is not the unclear functional language of Halliburton . See 514 F.3d at 1253 (specification did not note the "degree of fragility of its invention"); see also Medicines Co. v. Mylan, Inc. , 853 F.3d 1296, 1307 (Fed. Cir. 2017) (claim recited "efficient" mixing but specification did not define "efficient"). Therefore, I determine that Stryker had not met its burden on summary judgment to show that claim 29 is indefinite because of improper functional claiming.

3. The '920 Patent is not Invalid for Obviousness-Type Double Patenting

Zimmer has moved for summary judgment that the asserted claims are not invalid over the claims of related U.S. Patent No. 7,090,663 ("the '663 patent") as a matter of law. (D.I. 314 at 18). Stryker cross-moves that the asserted claims are invalid for obviousness-type double patenting. (D.I. 359 at 17). As the parties were briefing summary judgment motions, Zimmer filed a terminal disclaimer of the '920 patent term. (D.I. 387 at 5; D.I. 388-1, Ex. 27). Stryker requested and received permission to file a supplemental motion for summary judgment of limitation of damages to post-disclaimer infringement. (D.I. 396; D.I. 410).

A patent may be invalid for obviousness-type double patenting where two patents are commonly owned and the later-expiring patent would have been obvious in light of the earlier-expiring patent. See AbbVie Inc. v. Mathilda, 764 F.3d 1366, 1373-74 (Fed. Cir. 2014). Zimmer asserted in its opening brief, without conceding obviousness, that the '920 patent and the '663 patent have the same expiration date because the patents both claim priority to the same date and have received no patent term extensions or adjustments. (D.I. 314 at 18-19, 18 n.5). Therefore, Zimmer asserts the '920 patent is not invalid for obviousness-type double patenting. (Id. ). Stryker argues that the '920 patent is obvious in light of the related '663 patent, and that the '663 patent expires roughly two years earlier than the '920 patent because the '920 patent was reissued for the same patent term as the now-surrendered '420 patent. (Id. ).

The '920 patent is not invalid for obviousness-type double patenting. Stryker's arguments regarding § 251 and reissue patent terms reflect a hypertechnical reading of the statute and ignore the general statutory limitation that a patent term may only be granted for a term of twenty years from the application's filing or priority date. 35 U.S.C. § 154(a)(2). After the '920 patent issued, Zimmer obtained a certificate of correction correcting the priority date. (D.I. 315-1 at 336). Accepting Stryker's argument would result in the '920 patent receiving a twenty-two year patent term, instead of the mandated twenty. Moreover, Stryker's application of the law would eliminate the ability of parties to correct a priority claim through reissue proceedings. As the '663 patent and the '920 patent claim the same priority date and have no patent term extension, I determine that the patent term for both patents expires on the same day. Therefore, obviousness-type double patenting does not apply as a matter of law.

As the '920 patent was not invalid for obviousness-type double patenting before Zimmer filed a disclaimer, the disclaimer does not prevent Zimmer from seeking damages before December 12, 2018. I am unconvinced that Rembrandt Wireless Techs., LP v. Samsung Elecs. Co. , 853 F.3d 1370 (Fed. Cir. 2017), clearly decides this issue. Rembrandt addressed the issue of parties using disclaimer to circumvent the marking requirement under 35 U.S.C. § 287. Specifically, the Federal Circuit held that disclaimer cannot retroactively circumvent a third party's rights and the patentee's past obligation to mark. It did not clearly determine that disclaimer could never be given retroactive effect. There is a distinction between an attempt to evade a past obligation through retroactive disclaimer versus using a terminal disclaimer to avoid invalidity by disclaiming future patent rights. The policy behind the doctrine of obviousness-type double patenting is to prevent parties from extending the term of their patent beyond the statutory term. Yet, the Federal Circuit has previously endorsed the use of terminal disclaimers to override invalidity during litigation. See Boehringer Ingelheim Intern. GmbH v. Barr Labs., Inc. , 592 F.3d 1340, 1347 (Fed. Cir. 2010) ("[A] patentee may file a disclaimer after issuance of the challenged patent or during litigation, even after a finding that the challenged patent is invalid for obviousness-type double patenting."); Perricone v. Medicis Pharm. Corp. , 432 F.3d 1368, 1375 (Fed. Cir. 2005) ("[a] terminal disclaimer can indeed supplant a finding of invalidity for double patenting"). Boehringer suggests that terminal disclaimer only creates issue of retroactivity when it is pursued after the earlier patent expires. 592 F.3d at 1347. In other words, harm to others from obviousness-type double patenting only occurs after the earlier patent expires. I determine that Zimmer's disclaimer, therefore, does not limit Zimmer's past damages.

4. The '920 Patent is not Invalid for Reissue Recapture

Zimmer moves for summary judgment that the '920 patent claims do not violate the rule against recapture. Stryker cross-moves that the claims are invalid for improper recapture. Reissue proceedings "cannot be used to obtain subject matter that could not have been included in the original patent." Medtronic, Inc. v. Guidant Corp. , 465 F.3d 1360, 1372 (Fed. Cir. 2006). "Under the 'recapture' rule, the deliberate surrender of a claim to certain subject matter during the original prosecution of the application for a patent 'made in an effort to overcome a prior art rejection' is not such 'error' as will allow the patentee to recapture that subject matter in a reissue." Id. at 1372-73.

The parties agree the recapture rule requires a three-step analysis. The Court must first determine "whether, and in what respect, the reissue claims are broader" than the original patent claims. Id. at 1373. Second, the court must determine whether the "broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution." Id. The surrender at this second step must be deliberate. Id. at 1372-73. Absent "evidence that an amendment or cancellation was 'an admission that the scope of that claim was not in fact patentable,' " surrender is not deliberate. Medtronic Inc. v. Guidant Corp. , 378 F.Supp.2d 503, 518 (D. Del. 2005), aff'd 465 F.3d 1360 (Fed Cir. 2006) (internal citations omitted). Third, if surrender is deliberate, the court then determines "whether the reissue claims were materially narrowed in other respects" to avoid the recapture rule. Medtronic, 465 F.3d at 1373.

Stryker has asserted a defense that the asserted '920 claims violate the recapture rule in light of an amendment made during the prosecution of the '663 patent. The '663 patent is a divisional of the '425 patent and also claims priority to the '425 patent. (D.I. 315-1 at 370). Stryker's asserted defense is based upon dependent claim 6 of the '663 patent, which depends from claim 5, which depends from claim 1. (D.I. 359 at 20). During prosecution, the Examiner rejected claims 1, 2, 4, and 5 as obvious. (D.I. 362-1 at 321-27). The Examiner did not reject claims 6-8, instead stating, "Claims 6-8 are objected to as being dependent on a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims." (Id. at 327). Zimmer did not rewrite claim 6 as an independent claim but amended claim 1 to overcome the obviousness objection. (Id. at 332-34). Stryker cites this amendment as the basis for its recapture defense.

Zimmer argues that Stryker's recapture defense fails as a matter of law because Stryker cannot demonstrate the deliberate surrender of subject matter in claim 6 to overcome a prior art rejection. Specifically, Zimmer argues that claim 6 was never rejected under the prior art, and the amendment to claim 1 cannot be the "deliberate surrender" of claim 6 subject matter under the recapture rule. I agree with Zimmer. The first step of the recapture analysis asks whether and in what aspect the reissued claims of the '920 patent are broader than those of the '663 patent. Stryker asserts the reissued claims are broader than the '663 patent. Zimmer states that I need not address this point because step two of the analysis is determinative. I agree.

The second step of the recapture analysis asks whether there was any deliberate surrender of a claim to certain subject matter to overcome a prior art rejection. I determine there was not. The Examiner specifically provided that claim 6 was allowable if rewritten in independent form. The fact that Zimmer amended claim 1 to overcome a separate prior art rejection does not equate to a deliberate surrender of the subject matter deemed allowable under claim 6. There must be evidence that an amendment or cancellation was an admission that the scope of that claim was not in fact patentable for surrender to be deliberate. Medtronic, 378 F.Supp.2d at 518. Here, the evidence does not indicate that the amendment of independent claim 1 was an admission that the scope of claim 6 was not in fact patentable. Because I have determined that there was no deliberate surrender under step two of the recapture analysis, I need not continue to step three. The asserted claims of the '920 patent are not invalid for reissue recapture.

5. Stryker Has Not Demonstrated an Absence of Genuine Dispute of Fact as to Whether the Terry Reference Invalidates the '920 Patent

Stryker asserts that the '920 patent is invalid as anticipated by or obvious in light of the Terry patent as a matter of law, even with a 2002 priority date. (D.I. 320 at 9). Zimmer asserts that factual issues preclude summary judgment. (D.I. 351 at 6). A patent claim is anticipated "if each and every limitation is found either expressly or inherently in a single prior art reference." King Pharms., Inc. v. Eon Labs., Inc. , 616 F.3d 1267, 1274 (Fed. Cir. 2010). Patents are presumed valid and invalidity must be proven by clear and convincing evidence. Microsoft Corp. v. i4i Ltd. P'ship, 564 U.S. 91, 131 S.Ct. 2238, 180 L.Ed.2d 131 (2011).

First, Stryker has not shown an absence of disputes of fact as to whether the Terry Reference anticipates claims 15, 17, 18, 20, 21, 27, 29, 30, 32, 33, 35, and 36. There is a dispute over two claim elements: (1) "at least one of the suction ports being configured to provide at least two different levels of suction" and (2) "a level of suction at one of the suction ports being independently adjustable of a level of suction at another of the suction ports." (Ex. 504 at 30). Zimmer asserts that the claims of the '920 patent"require active suction control and independent adjustment when a vacuum is applied and that Terry discloses no such thing." (D.I. 351 at 7). Stryker asserts that the Terry reference "satisfies these limitations via 'control levers 44' that separately control the vacuum level at each of two suction ports on the cart." (D.I. 320 at 10.) "Disputed material issues of fact concerning how one of ordinary skill in the art would understand disclosure of a particular technology mandates denial of summary judgment of anticipation." Robocast, Inc. v. Apple, Inc. , 39 F.Supp.3d 552, 564 (D. Del. 2014) (citing Osram Sylvania v. Am. Induction Techs. , 701 F.3d 698, 706 (Fed. Cir. 2012). This is such a case. Moreover, there are factual disputes regarding whether the Terry reference discloses every limitation of independent claims 15 and 29. (D.I. 351 at 70). Stryker's motion for summary judgment of invalidity of claims 15, 17, 18, 20, 21, 27, 29, 30, 32, 33, 35, and 36 is therefore denied.

Second, Stryker has not demonstrated an absence of genuine factual disputes as to whether the Terry Reference anticipates claims 19, 28 and 34 or otherwise renders them obvious as a matter of law. Nor has Stryker shown an absence of dispute of fact as to whether the Terry Reference renders claims 24 and 39 obvious. These claims are dependent claims and depend from claims 15 and 29. "As a dependent claim contains at least one more limitation than the independent claim upon which it depends, it cannot be invalid under § 102 ... if the independent claim upon which it depends is not anticipated." CA, Inc. v. Simple.com, Inc. , 780 F.Supp.2d 196, 260 (E.D.N.Y. 2009) ; see also Duhn Oil Tool, Inc. v. Cooper Cameron Corp. , 2012 WL 604138 (E.D. Cal. Feb. 23, 2012). As there are genuine disputes of fact as to whether claims 15 and 29 are anticipated, there are also genuine disputes of fact as to the dependent claims.

Similarly, if an independent claim is nonobvious, then the dependent claim is also nonobvious. In re Fine, 837 F.2d 1071, 1076 (Fed. Cir. 1988) ("A claim that depends from a non-obvious independent claim is non-obvious because it contains all the limitations of the independent claim, plus a further limitation."). Thus, I do not need to consider "arguments that certain dependent claim limitations would have been obvious where the base claim has not been proven invalid." SynQor, Inc. v. Artesyn Techs., Inc. , 709 F.3d 1365, 1375 (Fed. Cir. 2013). As there are genuine disputes of fact as to whether 15 and 29 are invalid for obviousness, those disputes also exist for the dependent claims. Thus, Stryker has not met its burden.

6. The '920 Patent is not Invalid for Violating Original Patent Requirement

35 U.S.C. § 251 provides, "Whenever any patent is, through error, deemed wholly or partly inoperative or invalid ... by reason of a patentee claiming more or less than he had a right to claim," the PTO may "reissue the patent for the invention disclosed in the original patent." The Federal Circuit has stated that "the essential inquiry under the 'original patent' clause of § 251... is whether one skilled in the art, reading the specification, would identify the subject matter of the new claims as invented and disclosed by the patentees." Hester Indus., Inc. v. Stein, Inc. , 142 F.3d 1472, 1484 (Fed. Cir. 1998) (quoting In re Amos, 953 F.2d 613, 618 (Fed. Cir. 1991) ). The Federal Circuit has explained that the inquiry "is analogous to the written description requirement under § 112, ¶ 1," Revolution Eyewear, Inc. v. Aspex Eyewear, Inc. , 563 F.3d 1358, 1367 (Fed. Cir. 2009), but that "the specification must clearly and unequivocally disclose the newly claimed invention as a separate invention." Antares Pharma v. Medac Pharma , 771 F.3d 1354, 1362 (Fed. Cir. 2014). "Whether the claims of a reissue patent violate 35 U.S.C. § 251, and thus are invalid, is a question of law...." N. Am. Container v. Plastipak Packaging, 415 F.3d 1335, 1349 (Fed. Cir. 2005).

Stryker moves for summary judgment that the asserted reissue claims violate the original patent requirement. (D.I. 320 at 16-17). Specifically, Stryker, relying on Antares, asserts that the '920 patent"does not explicitly describe a collection cart and disposal unit without the features of the '420 patent." (Id. at 17). Zimmer argues that Stryker overextends Antares because the court there relied on the failure of the specification to disclose "the particular combinations of safety features claimed on reissue." (D.I. 351 at 14 (quoting Antares , 771 F.3d at 1363 ) ).

I agree with Zimmer. The '920 patent specification expressly discloses every limitation of the asserted claims. It discloses a collection cart and disposal unit without the features that Stryker identifies as new matter in the '420 patent. ( '920 patent, col. 4:64-6:40, 6:55-7:21, 8:8-20, 9:62-10:2). Therefore, the original '420 patent did more than merely suggest or indicate the invention of a collection cart and disposal unit system in the specification. This is not a case like Antares where the focus of the claims shifted from the original patent (jet injectors) to the reissue patents (safety features). 771 F.3d at 1362-63. Moreover, I understand the '420 patent to describe "independently adjustable" suction at the suction ports or suction ports arranged to have at least two levels of suction within the specification, though it does not do so explicitly. (See '420 patent, col. 6:4-28). The '420 patent describes a collection cart and disposal unit. The reissue claims of the '920 patent are therefore directed to the invention disclosed in the original patent and are not invalid under the original patent requirement. Stryker's motion for summary judgment is therefore denied.

7. Intervening Rights

Zimmer moves for summary judgment that Stryker is precluded from asserting an intervening rights defense. (D.I. 314 at 22). Stryker cross-moves for summary judgment that it is entitled to intervening rights as a matter of law and independently moves for summary judgment that Zimmer is only entitled to damages on manifolds used with accused systems sold after the '920 patent issued. (D.I. 320 at 21; D.I. 359 at 23).

The doctrine of intervening rights "provides an accused infringer with the absolute right to use or sell a product that was made, used, or purchased before the grant of the reissue patent as long as this activity does not infringe a claim of the reissue patent that was in the original patent." BIC Leisure Prods., Inc. v. Windsurfing Int'l, Inc. , 1 F.3d 1214, 1220-21 (Fed. Cir. 1993) ; see 35 U.S.C. § 252 ; Marine Polymer Techs., Inc. v. HemCon, Inc. , 672 F.3d 1350, 1361-62 (Fed. Cir. 2012). "[I]ntervening rights is an affirmative defense, and as such, the burden of proof rests on the party raising the defense." Intest Corp. v. Reid-Ashman Mfg., Inc. , 66 F.Supp.2d 576, 582 (D. Del. 1999).

Stryker argues that Zimmer is not entitled to damages on manifolds purchased for use with systems purchased before the '920 patent reissued or before this lawsuit was filed, because (1) the Asserted Claims were not present in the original patent, and (2) Zimmer did not mark its products or provide notice of the '920 patent under 35 U.S.C. § 287 until it filed suit in August 2016. (D.I. 320 at 21-22). Zimmer argues that Stryker should be foreclosed from seeking a reduction in damages due to intervening rights because Stryker has failed to produce certain financial sales information. (D.I. 314 at 22). Zimmer argues that to prove its defense of intervening rights, "Stryker must prove both that a cart was sold to a customer during the relevant time and that a later sold manifold was sold for use with that particular cart." (D.I. 351 at 19). Zimmer asserts that when "damages cannot be ascertained with precision because the evidence available from the infringer is inadequate, doubt is resolved against the infringer." Revolution Eyewear, Inc. v. Aspex Eyewear, Inc. , 2008 WL 6873811, at *5 (C.D. Cal. Jan 3, 2008). The only sales data produced by Stryker was cumulative sales data. Zimmer alleges that this is insufficient to establish an intervening rights defense. (D.I. 314 at 23).

Stryker responds, "The only question to ask under [the intervening rights] test is whether claims of the original patent which are repeated in the reissue patent are infringed." Austin Powder Co. v. Atlas Powder Co. , 593 F.Supp. 208, 215 (D. Del. 1984) (quoting Seattle Box Co. v. Industrial Crating & Packing, Inc. , 731 F.2d 818, 829-30 (Fed. Cir. 1984) ). Stryker also contends that the customer specific data does not describe which manifolds customers use with fluid carts and that, if Zimmer believed that data was necessary, it should have moved to compel production during discovery. (D.I. 359 at 28-29).

Genuine disputes of material fact preclude summary judgment on Stryker's intervening rights defense. The parties dispute whether any of the manifolds on which Zimmer seeks damages were sold for use with an accused cart purchased before the '920 patent reissued. (D.I. 314 at 23; D.I. 359 at 26). As there may be no manifolds for which an intervening rights defense could apply, summary judgment that Stryker is entitled an intervening rights defense as a matter of law is inappropriate.

However, it is improper to foreclose Stryker from offering its intervening rights defense when Zimmer did not compel production of evidence it now states is necessary. The cases Zimmer cites in support of its arguments do not support the imposition of such a harsh penalty upon Stryker. Rather, the cases suggest that an adverse inference may be appropriate where evidence has been destroyed or not maintained. See Sensonics, Inc. v. Aerosonic Corp. , 81 F.3d 1566, 1572 (Fed. Cir. 1996). Nor at this point can I conclude that there is no evidence to support the damages conclusion. See Revolution, 2008 WL 6873811, at *4-8. Here, Stryker provides expert testimony based on underlying data to establish the number of manifolds it believes will be subject to intervening rights. (D.I. 362-1, Ex. 1019 at ¶¶ 29, 32-35, 39-40). A reasonable jury could determine that those manifolds are not subject to damages. Therefore, summary judgment is inappropriate, and Stryker is not foreclosed from presenting an intervening rights defense.

8. Zimmer may Pursue Lost Profits

Stryker moves for summary judgment that Zimmer is not entitled to lost profits on the '920 patent because Zimmer has failed to establish the absence of non-infringing alternatives. (D.I. 320 at 17). Zimmer opposes the motion for two reasons: (1) that in a two-supplier market, there is a presumption of causation for lost profits, and (2) that a dispute as to the number of suppliers in the relevant market raises a factual issue. (D.I. 351 at 14-15).

I determine that there are material disputes of fact that preclude summary judgment. Specifically, the parties dispute whether there are any noninfringing alternatives. I determine that a reasonable jury could determine that there is an absence of noninfringing alternatives given the circumstances of the market recall that Dr. Mody refers to in her expert report. (D.I. 352-1 at 34). Therefore, I deny Stryker's motion for summary judgment of no lost profits.

9. Zimmer may Pursue Damages for Manifold Sales

Stryker moves for summary judgment that Zimmer is not entitled to damages for any manifold sales because the manifolds are unpatented products and not required for infringement. (D.I. 320 at 19-20). Zimmer argues that its technical expert, Mr. Meyst, has testified that the manifolds are part of the claimed infringing system because the manifold ports are the suction ports required by the claims. (D.I. 351 at 16-17). Zimmer also asserts that even if a manifold is not necessary for infringement, it is still entitled to damages for the manifold sales under a functional and economic "single-unit" theory. (Id. at 17).

There is a genuine dispute of material fact which precludes summary judgment as to damages on manifold sales. Stryker contends that its accused product, the Neptune 2 fluid cart, does not infringe. Zimmer's expert offers two alternate theories on infringement: that the manifold operates as the claimed suction port, or the face plate on the accused product is the claimed suction port. (D.I. 351 at 16). A reasonable jury could find from the expert testimony that the manifold, when used in the system, is the suction port claimed, and therefore is part of the infringing system as a whole. Thus, there is a dispute of material fact as to whether Stryker's manifolds are part of the infringing system and subject to damages.

If the manifolds are not part of the infringing system, Zimmer is not entitled to lost profits damages for the manifolds under a "convoyed sales" analysis as a matter of law. In Rite-Hite Corp. v. Kelley Co. Inc. , 56 F.3d 1538 (Fed. Cir. 1995), the Federal Circuit "explained that the entire market value rule was a principle of patent damages that defined a patentee's ability to recover lost profits on unpatented components typically sold with a patented item." Juicy Whip, Inc. v. Orange Bang, Inc. , 382 F.3d 1367, 1371 (Fed. Cir. 2004). The entire market value rule "permits recovery of damages based on the value of a patentee's entire apparatus containing several features when the patent related feature is the basis for customer demand." Rite-Hite, 56 F.3d at 1549. Thus, "[a] patentee may recover lost profits on ... a convoyed sale[ ] if both the patented and unpatented products 'together were considered to be components of a single assembly or parts of a complete machine, or they together constituted a functional unit' " and the patent-related feature drives demand for the functional unit as a whole. Am. Seating Co. v. USSC Group, Inc. , 514 F.3d 1262, 1268 (Fed. Cir. 2008) (quoting Rite-Hite, 56 F.3d at 1550 ).

Here, there is a functional relationship between the manifolds and the fluid carts-the fluid carts cannot operate to achieve their function without a manifold. (D.I. 351 at 17). Therefore, the manifolds and the fluid carts are "analogous to parts of a single assembly or a complete machine," Juicy Whip, 382 F.3d at 1372, that "function together to achieve one result," Rite-Hite, 56 F.3d at 1551. However, there is no material dispute of fact that the patented features-independently adjustable suction and two canisters-do not drive demand for the functional unit as a whole. (D.I. 333, Ex. 1000 at 241-45, Ex. 1003 at 248-252, 271-275; D.I. 329, Ex. E, ¶ 54). Therefore, as Zimmer cannot show that its patented features drive customer demand, it cannot show entitlement to convoyed sales.

Stryker also moves for summary judgment that damages on manifold sales should be limited to those sold for use with Neptune fluid carts sold after this lawsuit was filed because Zimmer did not satisfy the marking or notice requirement of 35 U.S.C. § 287. (D.I. 320 at 22). Zimmer opposes the motion, arguing that Stryker has failed to tie any post-notice manifold sales to Neptune carts sold pre-suit. (D.I. 351 at 19). As discussed above, there is a genuine dispute of material fact as to whether any of the manifolds on which Zimmer seeks damages were sold for use with an accused cart purchased before Stryker received notice of the '920 patent.

10. Willful Infringement

Stryker moves for summary judgment of no willful infringement of the '920 patent. (D.I. 320 at 23). "[A]n infringer's subjective bad faith alone may support an award of enhanced damages" under Halo Elecs., Inc. v. Pulse Elecs., Inc. , --- U.S. ----, 136 S.Ct. 1923, 195 L.Ed.2d 278 (2016). WBIP, LLC v. Kohler Co. , 829 F.3d 1317, 1340-41 (Fed. Cir. 2016). A patentee need only prove "subjective willfulness alone - i.e., proof that the defendant acted despite a risk of infringement that was 'either known or so obvious that it should have been known to the accused infringer.' " WesternGeco LLC. v. ION Geophysical Corp. , 837 F.3d 1358, 1362 (Fed. Cir. 2016) (quoting Halo, 136 S.Ct. at 1930 ).

Stryker argues that "Zimmer has not identified any 'egregious' behavior by Stryker that would rise to the level of willful infringement." (D.I. 320 at 23). Implicit in Stryker's briefing is the assertion that Stryker's continued sale of the accused products after the filing of this suit is not egregious. (See id. (stating Zimmer only identified continued sale of accused products) ). Zimmer argues that a jury could infer that Stryker has engaged in egregious behavior beyond infringement from Stryker's continued sale, marketing, and refusal to design around the '920 patent to avoid infringement after this suit was filed. (D.I. 351 at 20-21).

To determine whether willful infringement has occurred, the correct inquiry is the "subjective willfulness" of the infringer, not whether the infringement itself was "egregious." Valinge Innovation AB v. Halstead New England Corp., 2018 WL 2411218, at *7 (D. Del. May 29, 2018). Taking the evidence in the light most favorable to Zimmer, as I am required to do, I determine that a reasonable jury could find Stryker's post-filing conduct to be willful. Zimmer has alleged that Stryker continues to infringe, has failed to undertake efforts to design around the '920 patent, and has asserted defenses that it knows to be unreasonable. , (D.I. 351 at 21). A reasonable jury could, therefore, find that Stryker "acted despite a risk of infringement that was 'either known or so obvious that it should have been known to [Stryker].' " WesternGeco LLC , 837 F.3d at 1362 (quoting Halo, 136 S.Ct. at 1930 ). Accordingly, the Court will deny Stryker's motion for summary judgment of no willful infringement.

11. Stryker has not Proven that Zimmer Infringes the '428 Patent

Stryker has filed a motion for summary judgment that Zimmer infringes claims 14 and 23 of the '428 patent as well as the associated dependent claims. (D.I. 320 at 2). Zimmer filed a motion for summary judgment that the claim term "receiver" is a means-plus-function element and that Zimmer does not infringe under that construction. (D.I. 314 at 25).

a. Claim Construction of "Receiver"

The parties agree that the term "receiver" needs construction. (D.I. 314 at 25; D.I. 320 at 27). Stryker contends that the ordinary meaning of receiver is "receptacle." (D.I. 320 at 27). Zimmer asserts that "receiver" is a means-plus-function element under 35 U.S.C. § 112 ¶ 6 and should be defined by its function: receiving the manifold housing. (D.I. 314 at 26). The Court will construe the term "receiver" in the '428 patent to mean "receptacle" for the following reasons.

When determining whether a term is subject to 35 U.S.C. § 112 ¶ 6, "[t]he standard is whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for the structure." Williamson v. Citrix Online, 792 F.3d 1339, 1349 (Fed. Cir. 2015). Where the claim does not use the word "means," there is a presumption that § 112, ¶ 6 does not apply. Id. at 1348-49. This presumption may be overcome "if the challenger demonstrates that the claim term fails to recite sufficiently definite structure or else recites function without reciting sufficient structure for performing that function." Id. (cleaned up).

The term "receiver" does not meet this test. The claims do not use the word "means" and therefore, absent evidence otherwise, the term is not a means-plus-function element. Zimmer has not shown that the term "receiver" fails to recite sufficient structure for performing that function. I determine that the plain and ordinary meaning of "receiver" is clear from the intrinsic record. The claim language itself provides sufficient structure to inform a person of ordinary skill in the art of the structure of the receiver. Claims 1, 14, and 23 explain that the receiver is "shaped to have: a bore dimensioned to receive" the manifold housing, "the bore having an open distal end into which said manifold is inserted...." ( '428 patent, col. 21:46-50). The receiver is "formed with complementary alignment features that engage when the manifold is inserted...." (Id. 21:56-58). The specification clearly discusses components of the receiver in various embodiments and includes four columns describing the preferred embodiment of the receiver and its components. (Id. 5:14-9:15). Thus, I determine that the appropriate construction of "receiver" is "receptacle."

b. There are Material Disputes of Fact Precluding Summary Judgment

There are genuine disputes of material fact that preclude summary judgment on infringement of the '428 patent. First, as to claims 14 and 23 of the '428 patent, there are genuine disputes of fact as to whether (1) the "fluid communications path from the receiver bore into first canister" limitation is met, (2) the "proximal end in fluid communication with [the] first canister" limitation is met, and (3) the canister caps or lids can be a receiver. The parties' experts disagree as to whether the opening of the receiver bore in the canister is the fluid communications path. (D.I. 351 at 26-27). Moreover, the experts have testified as to the manifolds being in fluid communication with the canister, but Zimmer's expert contends that the proximal end of the receiver bore is not in fluid communication with the canister. (Id. at 28). Additionally, Zimmer points to testimony from Stryker's expert, Mr. Sheehan, that a receiver cannot be a cap. (D.I. 334 at 415). Zimmer argues that the alleged infringing receiver operates as a cap, and therefore cannot meet the claim terms of the '428 patent. (D.I. 351 at 29). Therefore, there is a genuine dispute of material fact as to whether Zimmer infringes claims 14 and 23 the '428 patent.

Second, as to claim 14 of the '428 patent, there is an additional dispute as to whether the manifolds satisfy the outlet at the proximal end of the housing requirement of the claims. Specifically, Dr. Layton has explained that Zimmer's systems do not have a manifold as required by claim 14. (D.I. 332, Ex. 515 ¶ 65). Stryker contends that the opening does not need to be "part of" the manifold housing. (D.I. 320 at 33). Therefore, there is a genuine dispute of material fact as to whether this claim limitation is satisfied and summary judgment is not appropriate.

12. Stryker has Not Shown that Zimmer Cannot Prove Invalidity based on Prior Art

Stryker seeks summary judgment that the asserted claims of the '428 patent are not obvious because Zimmer cannot establish that the prior art includes multiple elements of the '428 claims. (D.I. 320 at 34). Zimmer argues that factual issues preclude summary judgment. (D.I. 351 at 33). Obviousness is a question of law based on underlying factual issues, including the scope and content of the prior art, the differences between the claims and the prior art, the level of ordinary skill in the art, and objective indicia of nonobviousness. Graham v. John Deere Co. , 383 U.S. 1, 17-18, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966).

I agree with Zimmer that there are material disputes of fact that preclude summary judgment. Stryker identifies two elements of the '428 patent claims that it asserts Zimmer cannot show were present in the prior art: (1) the independent claims require a manifold to sit at an angle within a receiver, and (2) the independent claims require that when the manifold is rotated about the receiver bore axis from a first position to a second position, the "outlet opening [when the manifold is in the second position] is located below the position of the outlet opening when [the manifold] is in the first rotational position." ( '428 patent, cl. 1, 14, 23). However, Zimmer has identified pieces of prior art, which its experts contend teach these elements of the '428 patent claims. (D.I. 351 at 34-35).

First, Zimmer's expert Dr. Layton identified the Adahan reference, which he asserts teaches that fluid should enter a waste container at an angle rather than vertically. (D.I. 332, Ex. 525 at 5:5-33). Moreover, a disagreement between the experts about what the Adahan reference discloses is a factual dispute about the content of the prior art. Graham, 383 U.S. at 17-18, 86 S.Ct. 684. Second, Zimmer's expert identifies the use of certain lids, the CL100 and CL200, with the prior art transposal system as teaching the outlet opening moving from one position to a position located below. (Ex. 514 ¶¶ 169-175). Therefore, because Zimmer has identified genuine disputes of material fact, summary judgment of invalidity on the '428 patent is inappropriate.

B. DAUBERT MOTIONS

1. Zimmer's Motion to Exclude Dr. Vellturo's Opinions

Zimmer has moved to exclude Dr. Vellturo's opinions (1) relying on the settlement licensing agreements between Dornoch Medical Systems, Bemis Manufacturing Company, and the Educator Partnership to establish a reasonable royalty rate, (2) on the damages for alleged infringement of the '428 patent calculated from an incorrect date, and (3) on calculations using speculative manifold-per-day-rates, assumed equipment life expectancies, or unestablished discount rates. (D.I. 323 at 19). Stryker opposes the motion arguing that (1) the Bemis licensing agreement "is the most relevant in the record and is technically and economically comparable to the accused products and the patents-in-suit" (D.I. 360 at 1), and (2) Dr. Vellturo's damages calculations are legally proper and disagreements between experts are a matter of weight. (Id. ).

a. Bemis Licensing Agreement

"In determining the reasonable royalty, an expert witness may rely on existing royalty agreements entered into at arms-length[,] as long as those agreements are sufficiently comparable to the hypothetical license at issue in suit." W.L. Gore & Assocs. v. C.R. Bard, 2015 WL 12731924, at *6 (D. Del. Nov. 4, 2015). To show that a license is "sufficiently comparable," the expert must demonstrate "how similar or dissimilar the patented technology" covered by the prior licenses is to the patents-in-suit, Lucent Techs., Inc. v. Gateway, Inc. , 580 F.3d 1301, 1331 (Fed. Cir. 2009), and "account for the technological and economic differences" between the patented technology covered by the licens