Cerner Corp v Visicu Inc

Cerner Corp. v. Visicu, Inc., — F.Supp.2d — , 2009 WL 3526654 (W.D.Mo. 2009).

* Author's Note: The sections of the opinion discussing trade secrets were omitted. Only discussions involving patent law were evaluated.

Visicu developed an eICU remote monitoring system to provide doctors and other medical personnel the ability to make decisions and guide care for ICU patients remotely. Cerner developed a similar remote ICU system called INET. The two companies had discussed a partnership, but that fell through. Although during partnership discussions, both companies exchanged information regarding each other’s systems.

On November 18, 1999, Visicu filed for its patent (the ‘656 patent). After the PTO initially rejected Visicu’s first patent based on prior art, Visicu submitted new claims, of which the analysis was completed by the computer rather than a human operator. Visicu’s patent issued on October 12, 2004. On September 21, 2004, Visicu filed for a supplemental patent to ‘656 (the ‘708 patent). The ‘708 patent issued on August 14, 2007.

This action was initiated by Cerner. Cerner is seeking declarations that (1) it had not infringed and is not infringing the ‘656 patent, either directly or contributorily; (2) the ‘656 patent is invalid; (3) the ‘656 patent is unenforceable due to patent misuse and/or inequitable conduct; and (4) Visicu engaged in unfair competition and tortuous interference with Cerner’s contracts and business expectancies.

Visicu counterclaimed for (1) patent infringement; (2) inducement of patent infringement; (3) contributory patent infringement; (4) trade secret misappropriation; (5) breach of contract; (6) unfair competition under the Lanham Act; (7) common law unfair competition; (8) injurious falsehood; and (9) tortuous interference with contract and business expectancy.

Procedural Posture
This was a decision on cross-motions for summary judgment. Cerner filed motions for summary judgment based on non-infringement, invalidity of patent, intervening rights, willful infringement, and misappropriation of trade secrets. Visicu filed a motion for summary judgment regarding no inequitable conduct.

Patent Infringement – “Requires a two-step analysis: (1) the scope of the claims must be construed; and (2) the allegedly infringing device muse be compared to the construed claims.” Mars, Inc. v. H.J. Heinz Co., 377 F.3d 1369, 1373 (Fed.Cir. 2004).

Invalidity – “A patent is invalid if the subject matter sought to be patented is obvious from prior art existing at the time of the application.” See 35 U.S.C. § 103(a).

Intervening Rights – “When a patent has been reexamined by the PTO, a patentee is precluded from collecting damages for infringement that occurred before issuance of the reexamination certificate unless the original and reexamined claims are ‘substantially identical.’” See 35 U.S.C. §§ 252 and 307(b).

Willful Infringement – A question of fact.

Inequitable Conduct - “To successfully prove inequitable conduct, the accused infringer must present evidence that the applicant (1) made an affirmative misrepresentation of material fact, failed to disclose material information, or submitted false material information, and (2) intended to deceive the PTO.” Star Scientific, Inc. v. R.J. Reynolds Tobacco Co., 537 F.3d 1357, 1365 (Fed.Cir. 2008).

In summary, the court denied Cerner’s motions regarding non-infringement, invalidity, and willful infringement. The court granted Cerner's motion regarding intervening rights. The court granted in part and denied in part Cerner's motion regarding misappropriation of trade secrets. Finally, the court denied Visicu’s motion regarding no inequitable conduct.

First, the court found material factual disputes regarding Cerner’s alleged literal infringement, as well as Cerner’s alleged infringement by equivalence (Cerner’s argument regarding prosecution history estoppels did not persuade the court).

Further, the court found genuine issues of material facts regarding the four factors used for determining obviousness as set forth by SCOTUS in Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). The court also summarily stated that there were questions of fact regarding willful infringement.

Regarding intervening rights, the court examined the original and reexamined claims to determine whether the claims were “substantially identical.” Accordingly, the court found three changes made by Visicu which narrowed the scope of a claim. Because the claims were not “substantially identical,” the court granted Cerner’s motion for summary judgment regarding intervening rights.

Finally, the court found that the materiality of the prior art, as well as Visicu’s intent were in dispute. Therefore, the court denied Visicu’s motion for summary judgment regarding inequitable conduct.

Critical Analysis
This case holds firm with prior precedent in all patent law areas. Mostly, the court simply laws out the existing law and determines whether an issue of material fact exists. I think the court made the proper decisions with each motion.

The only motion that was fully granted was based on intervening rights. Here, the court properly determined that the original and reexamined claims were not “substantially identical.” Clearly, the claims were changed to limit the scope. The evidence was clear and convincing and the court made the proper decision.

Case Disposition
The majority of the motions were denied. Therefore, the case will proceed with the remaining claims.

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