Erbe and Canady Split Judgment

Posted on | June 25, 2008 | 3 Comments

2008-1425, 1426 Erbe Elektromedizin v. Canady
WD/PA 05-cv-1674
Judge Donetta W. Ambrose

Erbe and Canady appeal from portions of Judge Donetta Ambrose’s orders and judgments that essentially found in favor of defendant Canady on all plaintiffs’ claims, and in favor of Erbe on Canady’s counterclaims.

Erbe manufactures and sells flexible endoscopic probes for argon plasma coagulation (APC), and owns 5,720,745 related thereto.  Co-plaintiff Conmed makes and sells argon gas-enhanced electrocoagulation equipment and own 4,781,175 related thereto.  Erbe licenses the ’175 from Conmed.  Canady sells single use APC probes that are used with Erbe’s APC electrosurgical units.

Erbe/Conmed’s Claims against Canady.  Plaintiff’s alleged infringement of both the ’745 and ’175 patents, as well as claims related to Canady’s use of the color blue on probe tubes.

The court granted Canady summary judgment of non-infringement on the ’745.  In particular, the court had construed the claims to require argon flow rates of less than 1 liter/minute and flow velocities or less than 19 km/hour.  This was based on prosecution history statements made to distinguish the prior art.  Because Erbe could not show any evidence that Canady’s products were used at flows below these levels, there was no evidence of infringement.   

The court denied Canady summary judgment on the ’175, but the parties later entered into a partial settlement and this claim was dismissed with prejudice.

Erbe also asserted various claims of trademark infringement and unfair competition related to Canady’s use of the color blue–Erbe has a supplemental registration for blue and claimed trade dress.  The court granted Canady summary judgment finding (i) the color blue is functional because it provides better visibility during surgical procedures and (ii) Erbe failed to provide any evidence of secondary meaning to customers about the color blue–i.e., customers did not associate the color blue with Erbe.

Canady’s Counterclaims.  Canady asserted a variety of antitrust and tortious interference counterclaims (plus the usual ones for noninfringement and patent invalidity and unenforceability).  The court granted summary judgment to both Conmed and Erbe on the antitrust and patent misuse counterclaims–all were based on the act of filing the lawsuit.  The court found plaintiffs’ claims were not objectively baseless, and therefore not a sham.  Thus, the filing of the suit was immune from challenge under the Noerr-Pennington doctrine, which generally provides antitrust immunity to a party who petitions the government for redress, which includes the filing of lawsuits.

The court did deny Conmed’s motion with respect to tortious interference with business expectations, noting that Conmed sent a letter to one of Canady’s prospective customers–however, this claim was tried to the jury (the only claim so tried) who ruled in Conmed’s favor.

The patent related counterclaims–for invalidity, implied license, and inequitable conduct were all settled:  with prejudice on the ’176 and without prejudice on the ’745.

Notes:  I am in San Francisco for a few days, squeezing in side-visits to some of the places I used to go when I lived and worked in the Bay area.  Caffe Strada in Berkeley was once a very frequent stop–I took the bar review course at Boalt (15 a few years ago) and needed a large coffee at every break just to get me through to the next break. 

More reading:

Claim Construction

Summary Judgment

Counsel:

Erbe:  Dickstein Shapiro (Amanda S. Pitcher, Gabriela I. Coman, Laurence E. Fisher, Philip G. Hampton, II, Steven M. War) and Leland Schermer & Associates, Pittsburgh PA (Leland P. Schermer).

Conmed:  Same as Erbe plus Hancock & Estabrook, LLP, Syracuse, NY (Ashley D. Hayes, John G. Powers).

Canady: Newberg & Winters, Vienna VA (Brad R. Newberg, Christopher F. Winters), Timothy R. DeWitt, and Cohen & Grigsby, Pittsburgh, PA (Daniel M. Darragh, Mark A. Grace).

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