United States District Court, W.D. Wisconsin
For Ameritox, Ltd., Plaintiff: James P Ulwick, LEAD ATTORNEY, Kramon and Graham PA, Baltimore, MD; Adam Louis Marchuk, PRO HAC VICE, Mark T. Smith, Matthew F. Carmody, Michael R. Osterhoff, Tiffany Patrice Cunningham, Timothy J. Carroll, Perkins Coie LLP, Chicago, IL; David Edwin Jones, Perkins Coie LLP, Madison, WI.
For Marshfield Clinic, Plaintiff: James P Ulwick, LEAD ATTORNEY, Kramon and Graham PA, Baltimore, MD; Naikang Tsao, LEAD ATTORNEY, Foley & Lardner LLP, Madison, WI; Adam Louis Marchuk, PRO HAC VICE, Mark T. Smith, Matthew F. Carmody, Michael R. Osterhoff, Tiffany Patrice Cunningham, Timothy J. Carroll, Perkins Coie LLP, Chicago, IL; David Edwin Jones, Perkins Coie LLP, Madison, WI.
For Millennium Health, LLC, Defendant: Robert Benjamin Wolinsky, LEAD ATTORNEY, Arlene L Chow, PRO HAC VICE, Bonnie Chen, Hogan Lovells U.S. LLP, New York, NY; Douglas Maynard Poland, Jennifer Lynn Gregor, Godfrey & Kahn, S.C., Madison, WI; Rebecca Cheryl Mandel, Steven P Hollman, Hogan Lovells U.S. LLP, Washington, DC.
OPINION AND ORDER
WILLIAM M. CONLEY, United States District Judge.
Defendant Millennium Health, LLC moved in limine for an order excluding any evidence of willful infringement on the basis that Ameritox cannot show by clear and convincing evidence that Millennium " acted despite an objectively high likelihood that its actions constituted infringement of a valid patent." In re Seagate Technology, LLC, 497 F.3d 1360, 1371 (Fed. Cir. 2007) ( en banc ). The court declined to decide the issue on the eve of trial, opting instead to hear the evidence submitted in the invalidity phase before deciding the objective prong of the willful infringement claim. (4/3/15 Op. & Order (dkt. #380) 50.)
Having now had the benefit of hearing that evidence, as well as additional arguments and proffers by counsel for the parties, the court finds that Millennium's invalidity defense under § 103 is objectively reasonable. In particular, for reasons explained below, while the jury had sufficient evidence to find that the combination of the elements of claims 1, 2, 4-7, 10, and 16-18, of the '680 patent were not obvious, the court finds this was a " substantial question" and, therefore, plaintiffs have not met their burden of establishing that Millennium willfully infringed the patent. Bard Peripheral Vascular, Inc. v. W.L. Gore & Assocs., Inc., 776 F.3d 837, 844 (Fed. Cir. 2015) (" Bard II " ). The court further finds a substantial question with respect to Millennium's defense under § 101, although this a closer question given the treatment of patent eligibility at the time of infringement.
Despite this ruling, the court has also decided to permit the jury to resolve the so-called " subjective" prong of the willfulness standard. This is being done solely to avoid the necessity of an additional trial should the Federal Circuit disagree with this court's conclusion as to the objective prong, now that the jury has heard substantially, if not all, of the evidence necessary to reach this fact question. This opinion, therefore, further elaborates on the limits of admissible evidence and argument with respect to this question.
I. Objective Test
A. § 103 Defense
As Millennium argued to the jury, it believes that the '680 patent is invalid as obvious under 35 U.S.C. § 103. As an initial matter, the court may consider arguments developed during the course of litigation. See Halo Elecs., Inc. v. Pulse Elecs., Inc., 769 F.3d 1371, 1382 (Fed. Cir. 2014) (" The court properly considered the totality of the record evidence, including the obviousness defense that Pulse developed during the litigation, to determine whether there was an objectively-defined risk of infringement of a valid patent." (internal citations and quotations omitted)). The court finds all of the essential elements were present in the prior art, or at least that such a belief was objectively reasonable. The court also finds objectively reasonable the argument that one skilled in the art would make the step of combining these elements using Kell, and substituting creatinine for specific weight. S ...