Citations
- 637 F.3d 1269
Full opinion text
Opinion for the court filed by Circuit Judge LOURIE. Dissenting opinion filed by Circuit Judge PROST.
LOURIE, Circuit Judge.
SainWGobain Ceramics & Plastics, Inc. (“SainWGobain”) appeals from the decision of the United States District Court for the District of Delaware denying Saint-Gobain’s motion for judgment as a matter of law (“JMOL”) or for a new trial following the jury’s finding that SainWGobain infringed U.S. Patent 4,958,080 (the “'080 patent”) under the doctrine of equivalents. Siemens Med. Solutions USA Inc. v. Saint-Gobain Ceramics & Plastics, Inc., 615 F.Supp.2d 304 (D.Del.2009) (“JMOL Opinion ”). Siemens Medical Solutions USA, Inc. (“Siemens”) cross-appeals from the district court’s grant of Saint-Gobain’s motion for JMOL reducing the jury’s award of damages. Id.
Because we discern no legal error in the court’s jury instructions and no abuse of discretion in the court’s evidentiary rulings, we affirm the decision of the district court denying Saint-Gobain’s motion for JMOL or a new trial. However, for the reasons stated below, we vacate the district court’s damages award and remand for a determination of additional damages.
Background
Positron emission tomography (“PET”) is a nuclear medical imaging technique that provides images and information about the chemical structure and function of a patient’s organ systems. JMOL Opinion at 307. To obtain a PET scan, a patient is administered a radioactive isotope and enters the PET scanner. As the isotope decays in the patient’s body, it emits positrons. When a positron collides with an electron in the patient’s body, two gamma-ray photons are produced, which exit the patient’s body. The photons are detected by the PET scanner’s radiation detector, which contains thousands of scintillator crystals arranged in a ring around the patient’s body. As the district court found, “[a] scintillator, generally, is a substance that absorbs high energy radiation and, in response, fluoresces photons at a specific, longer wavelength, releasing the previously absorbed energy.” Id. at 307 n. 1. The scintillator crystals convert the emitted gamma rays into visible light, which is then detected to produce a three-dimensional image of the radioactivity in the patient. This image provides useful diagnostic information about the patient’s organ systems. Id. at 307.
Siemens develops, manufactures, and sells PET scanners. The scintillator crystals in Siemens’ PET scanners consist of cerium-doped lutetium oxyorthosilicate (“LSO”). JMOL Opinion at 307. SaintGobain manufactures and sells scintillator crystals for use in PET scanners. Saints Gobain’s crystals consist of cerium-doped lutetium-yttrium orthosilicate (“LYSO”), which differs chemically from LSO in that some of the lutetium is substituted for by yttrium. Id. Specifically, SainNGobain’s crystals are 10% Y LYSO, meaning that 10% of the lutetium atoms are substituted for by yttrium atoms. Saint-Gobain sells its scintillator crystals to Philips Medical Systems (“Philips”), which manufactures and sells PET scanners that compete with those sold by Siemens. Id. at 308.
Siemens owns the '080 patent, which relates to radiation detectors comprising an LSO scintillator crystal and a photodetector. JMOL Opinion at 307; J.A. 1210-11. The '080 patent was filed on August 4, 1989 and expired on October 6, 2008. JMOL Opinion at 307. Claim 1 of the '080 patent reads as follows:
1. A gamma ray or x-ray detector, comprising: a scintillator composed of a transparent single crystal of cerium-activated lutetium oxyorthosilicate having the general formulation Ce2xLu2a_x)Si05, where x is within the range of from approximately 2 x 10 to approximately 3 x 10 ', and
a photodetector optically coupled to the scintillator for producing an electrical signal in response to the emission of a light pulse by the scintillator.
'080 patent col.1211.7-15.
Although the '080 patent is the only asserted patent in this case, the parties’ arguments on appeal involve two additional patents. U.S. Patent 6,624,420 (the “'420 patent”), which is licensed to Saint-Gobain, discloses radiation detectors comprising LYSO scintillator crystals. JMOL Opinion at 307-08. Claim 1 of the '420 patent recites:
1. A scintillator detector for high energy radiation comprising: a monocrystalline structure of cerium doped lutetium yttrium orthosilicate, Ce^Lu^Yj, )2(i^)Si05 where x=approximately 0.0001 to approximately 0.05 and y=approximately 0.0001 to approximately 0.9999.
'420 patent eol.7 11.39-43. As the formula in claim 1 indicates, the LYSO crystals disclosed in the '420 patent range from O. 01% Y to 99.99% Y. The specification of the '420 patent states that LYSO crystals comprising 30% Y, 50% Y, 70% Y, and 85% Y were prepared. Id. col.4 11.51-58. The '420 patent was filed on February 17, 2000, and its front page lists the '080 patent among the “References Cited.”
The parties also reference U.S. Patent 6,323,489 (the “'489 patent”), another patent disclosing LYSO scintillator crystals. The '489 patent was the subject of an interference action with the patent application that issued as the '420 patent. Claim 1 of the '489 patent recites:
1. A crystal scintillator comprising a transparent single crystal of cerium-activated lutetium yttrium oxyorthosilicate having the general formula Lup^Yj-Ce^ Si05, wherein 0.05