United States District Court, D. Vermont
OPINION AND ORDER
WILLIAM K. SESSIONS III DISTRICT COURT JUDGE
Plaintiff Mobile Medical International Corporation (“MMIC”) seeks a declaratory judgment with respect to the validity and non-infringement of U.S. Patent No. 4, 915, 435 (the “‘435 Patent” or “patent”). Defendants Advanced Mobile Hospital Systems, Inc. and Tractus Medical, Inc. (collectively “AMoHS”) have counterclaimed for patent infringement. Tractus is a subsidiary of AMoHS and the alleged owner of the ‘435 Patent. Now before the Court are MMIC’s motions for summary judgment asserting non-infringement and invalidity, and AMoHS’s motions to strike portions of MMIC’s summary judgment filings.
For the reasons set forth below, those motions are denied.
I. Factual Background
The ‘435 Patent describes a transportable unit in which invasive surgical procedures can be performed. Both AMoHS and MMIC have manufactured and sold or leased mobile operating room units. MMIC was a licensee of the ‘435 Patent through 2003. AMoHS contends that twelve of MMIC’s Mobile Surgical Units (“MSUs”) manufactured since 2003 infringed the ‘435 Patent. The patent expired in 2012.
The ‘435 Patent was filed on April 4, 1989 and issued shortly thereafter to Dr. Brian Levine. Claim 1 of the patent, which is arguably the broadest of the patent’s claims, set forth the basic elements of the unit:
1. A mobile invasive surgery van capable of being transported on the roads and highways equipped with essential equipment for invasive surgery to be performed within the van, said van comprising:
a main body section that is capable of being towed, mounted on wheels for mobility by a separate power section;
an expandable portion of said main body provided by telescoping side sections thereof which move outwardly from the main body portion in order to form an expanded invasive surgery room;
an operating table centrally located in said expandable section, said table being stowable so that the expandable section may be nested or expanded without removal of said surgery room operating table from said van.
ECF No. 149-3 at 9.
Dr. Levine acknowledged in his patent application that mobile medical vehicles had already been designed, but characterized them as either “diagnostic” or “therapeutic.” Id. at 5. According to Dr. Levine, invasive surgical procedures were never performed in those pre-patent units, and AMoHS contests whether invasive surgery was ever approved. While MMIC contends that Dr. Levine failed to adequately disclose the structures of those pre-existing medical vehicles, AMoHS counters that the United States Patent and Trademark Office (“PTO”) examiners were fully aware of the vehicles and their respective structures.
MMIC claims that the patent is invalid because “[i]n reality, Levine invented nothing.” ECF No. 149-1 at 6. In support, MMIC cites long-existing entities such as mobile army surgical hospitals (“MASH” units), as well as prior publications. An example of the latter is a 1940 publication from a British medical journal showing a self-contained “mobile operating theatre” for performing sterile operations in “outlying districts.” ECF No. 149-7. In 1968, a printed publication from the Journal of the American Medical Association showed a “hospital on wheels” designed to “treat patients on the spot.” ECF No. 149-8. That publication suggested an interior that could accommodate complex surgeries, including heart surgery. In 1981, a publication called International Hospital Equipment advertized a “SITEC” mobile surgical unit that included a semi-tractor and trailer with three rooms: an anaesthetic and recovery area, an operating room, and a room for scrubbing and sterilization.
In 1982, European Patent Application 0 065 398 (“EP ‘398”) disclosed a trailer with telescoping sides, an operating table, beds, sinks, and other equipment that remained in the trailer when the telescoping sides either slid outward or nested inward. Another patent application (“US ‘705”), filed in the United States more than one year before the ‘435 application, showed a container with surgical equipment that could be relocated by a truck or other form of transportation.
A 1984 article by Oded D. Gasko depicted expandable trucks and relocatable shelters for mobile surgery that were actually used in Lebanon prior to the ‘435 Patent application. In January 1988, Linda O. Stone published “Mobile Unit Lithotripsy, ” which disclosed an expandable trailer equipped with powered telescoping sides. The Stone publication identified the expanded portion as an “operating room.” ECF No. 150-15. Also prior to 1989, Calumet Coach designed, built, and sold expandable semi-trailers equipped with an operating table and surgical equipment.
Given these prior publications, it is undisputed that more than one year prior to the ‘435 application in April 1989 persons of ordinary skill in the art knew about telescoping trailers capable of being equipped with surgical equipment. Such persons would also have been aware of rolling instrument tables, autoclaves, surgical monitors, patient lifts, and surgeon scrub rooms that could be used in mobile units.
However, AMoHS disputes whether the equipment depicted in any prior art met the definition of essential equipment for invasive surgery set forth in this Court’s Markman ruling. The Court has defined the ‘435 Patent as requiring “all the essential requirements for invasive surgery that a permanent and fixed hospital facility has” including “equipment required by health, building, and other regulatory codes for invasive surgery at the time and place of the intended use.” ECF No. 112 at 6-8. AMoHS contends that according to MMIC’s expert, Anthony Brummel, there was no prior art in 1989 depicting a unit with such equipment. Mr. Brummel’s deposition testimony included the following exchange:
Q: Okay, And can you name a single mobile unit prior to 1989 that met all the requirements that a fixed hospital facility’s operating room would have had in the United States?
Q: It didn't ...