Case 1:16-cv-01163-CFC-CJB Document 785 Filed 09/20/21 Page 1 of 15 PageID #: 36345
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`BOSTON SCIENTIFIC CORP. and
`BOSTON SCIENTIFIC
`NEUROMODULATION CORP.,
`
`Plaintiffs,
`
`v.
`
`Civil Action No. 16-1163-CFC
`CONSOLIDATED
`
`NEVRO CORP.,
`
`Defendant.
`
`Brian Farnan, Michael Farnan, FARNAN LLP, Wilmington, Delaware; Michael
`Kahn, Caitlin Olwell, Erica Holland, Andrew Schreiber, Svetlana Pavlovic, Brooks
`Kenyon, AKIN GUMP STRAUSS HAUER & FELD LLP; New York, New York;
`Anthony Pierce, C. Rash, Rachel Elsby; AKIN GUMP STRAUSS HAUER &
`FELD LLP; Washington, District of Columbia; Steven Maslowski, Jason Weil,
`AKIN GUMP STRAUSS HAUER & FELD LLP, Philadelphia, Pennsylvania;
`Matthew Wolf, Edward Han, Marc Cohn, Amy DeWitt, ARNOLD & PORTER
`KA YE SCHOLER LLP, Washington, District of Columbia; Dina Hayes,
`ARNOLD & PORTER KA YE SCHOLER LLP, Chicago, Illinois; Thomas
`Carmack, ARNOLD & PORTER KA YE SCHOLER LLP, Palo Alto, California
`
`Counsel for Plaintiff Boston Scientific Corp. and Boston Scientific
`Neuromodulation Corp.
`
`Rodger Smith, Michael Flynn, Lucinda Cucuzzella, MORRIS, NICHOLS, ARSHT
`& TUNNELL LLP, Wilmington, Delaware; Bradford Badke, Ching-Lee Fukuda,
`Sona De, Sharon Lee, Ketan Patel, Julie Hsia, SIDLEY AUSTIN LLP, New York,
`New York; Thomas Broughan, SIDLEY AUSTIN LLP, Washington, District of
`Columbia; Erik Fountain, SIDLEY AUSTIN LLP, Dallas, Texas; Nathan
`Greenblatt, SIDLEY AUSTIN LLP, Palo Alto, California
`
`Counsel for Defendant Nevro Corp.
`
`

`

`Case 1:16-cv-01163-CFC-CJB Document 785 Filed 09/20/21 Page 2 of 15 PageID #: 36346
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`MEMORANDUM OPINION
`
`September 20, 2021
`Wilmington, Delaware
`
`11
`
`

`

`Case 1:16-cv-01163-CFC-CJB Document 785 Filed 09/20/21 Page 3 of 15 PageID #: 36347
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`COLM~
`
`OLLY
`CHIEF JUDGE
`
`Plaintiffs Boston Scientific Corporation and Boston Scientific
`
`Neuromodulation Corporation (collectively, Boston Scientific) accused Defendant
`
`Nevro Corporation in both the original Complaint (D.I. 1) and the operative First
`
`Amended Complaint (D.I. 13) of infringing, among other patents, U.S. Patent
`
`Numbers 7,437,193 (the # 193 patent) and 8,644,933 (the #933 patent). The
`
`asserted claims of the# 193 patent, titled "Microstimulator Employing Improved
`
`Recharging Reporting And Telemetry Techniques," cover certain electronic
`
`medical devices that are configured to be implanted beneath a patient's skin for
`
`tissue stimulation to prevent and/or treat various disorders. The asserted claims of
`
`the #933 patent, titled "Techniques For Controlling Charging Of Batteries In An
`
`External Charger And An Implantable Medical Device," cover technology for
`
`controlling the charging of batteries used with such devices. Boston Scientific
`
`alleges that Nevro's Senza System, a high frequency spinal cord stimulator, and
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`Nevro's inducement of health care providers and patients to use that system
`
`infringe the asserted claims of the asserted patents. Boston Scientific also alleges
`
`that Nevro's infringement was and is willful. Pending before me is Nevro's
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`motion for "summary judgment of no willfulness with respect to the alleged
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`infringement" of the # 193 and #933 patents. D.I. 673 .
`
`

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`I.
`
`LEGAL STANDARDS
`
`A.
`
`Summary Judgment
`
`A court must grant summary judgment "if the movant shows that there is no
`
`genuine dispute as to any material fact and the movant is entitled to judgment as a
`
`matter of law." Fed. R. Civ. P. 56(a). Material facts are those "that could affect
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`the outcome" of the proceeding. Lamont v. New Jersey, 631 F.3d 177, 181 (3d Cir.
`
`2011). "[A] dispute about a material fact is genuine if the evidence is sufficient to
`
`permit a reasonable jury to return a verdict for the non-moving party." Id. (internal
`
`quotation marks omitted). A non-moving p~rty asserting that a fact is genuinely
`
`disputed must support such an assertion by: "(A) citing to particular parts of
`
`materials in the record, including depositions, documents, electronically stored
`
`information, affidavits or declarations, stipulations, ... admissions, interrogatory
`
`answers, or other materials; or (B) showing that the materials cited [by the
`
`opposing party] do not establish the absence ... of a genuine dispute .... " Fed. R.
`
`Civ. P. 56(c)(l). The non-moving party's evidence "must amount to more than a
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`scintilla, but may amount to less (in the evaluation of the court) than a
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`preponderance." Williams v. Borough of West Chester, Pa., 891 F.2d 458, 460-61
`
`(3d Cir. 1989).
`
`B. Willful Infringement
`
`Section 284 of the Patent Act "gives district courts the discretion to award
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`enhanced damages against those guilty of patent infringement." Halo Elecs., Inc.
`
`2
`
`

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`v. Pulse Elecs., Inc., 136 S. Ct. 1923, 1935 (2016). The statute provides that "the
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`court may increase the damages up to three times the amount found or assessed."
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`35 U.S.C. § 284. Although the Court in Halo intentionally "eschew[ ed] any rigid
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`formula for awarding enhanced damages under§ 284," 136 S. Ct. at 1934, the
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`Court held that the legal principles "developed over nearly two centuries of
`
`application and interpretation of the Patent Act ... channel the exercise of [the
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`district court's] discretion" and "limit[] the award of enhanced damages to
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`egregious cases of misconduct beyond typical infringement," id. at 1935. Thus,
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`enhanced damages awards under § 284 are available only in "egregious cases" of
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`misconduct that involve more than "typical" infringement. Id. As the Court
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`explained, the enhanced damages award provided by § 284 was "designed as a
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`'punitive' or 'vindictive' sanction for egregious infringement behavior ... [that]
`
`has been variously described in [the Court's] cases as willful, wanton, malicious,
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`bad-faith, deliberate, consciously wrongful, flagrant, or-indeed-characteristic of
`
`a pirate." Id. at 1932.
`
`Although "§ 284 allows district courts to punish th[is] full range of culpable
`
`behavior," id. at 1933, in the vast majority of patent cases filed today, claims for
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`enhanced damages are sought based on allegations of willful misconduct-so
`
`much so that, even though the words "willful" and "willfulness" do not appear in
`
`§ 284, plaintiffs and courts more often than not describe claims for enhanced
`
`3
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`

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`damages brought under§ 284 as "willful infringement claims." Indeed, some
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`parties and courts refer to such claims as willful infringement "causes of action"
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`even though § 271 of the Patent Act, which creates causes of action for direct,
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`induced, and contributory infringement, does not mention or suggest such a thing
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`as "willful infringement." 1
`
`The fact that willfulness is the most common type of misconduct alleged by
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`plaintiffs who invoke§ 284 makes sense, as willful conduct "serve[s] as [the] floor
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`for culpable behavior that may incur enhanced damages." Robert L. Harmon,
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`Cynthia A. Homan & Laura A. Lydigsen, Patents and the Federal Circuit, §
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`17.3(a), at 1378 (13th ed. 2017). It also explains the Court's statement in Halo that
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`enhanced damages under § 284 "should generally be reserved for egregious cases
`
`typified by willful misconduct." 136 S. Ct. at 1934 (emphasis added).
`
`In assessing the egregiousness of a defendant's conduct for § 284 purposes,
`
`1 See, e.g., Viilinge Innovation AB v. Halstead New Eng. Corp., 2018 WL 2411218,
`at *5 (D. Del. May 29, 2018); Milo & Gabby, LLCv. Amazon.com, Inc., 12 F.
`Supp. 3d 1341, 1353 (W.D. Wash. 2014); Trs. of Univ. of Pa. v. St. Jude
`Children's Research Hosp., 982 F. Supp. 2d 518, 529-30 (E.D. Pa. 2013);
`MONEC Holding AG v. Motorola Mobility, Inc., 897 F. Supp. 2d 225,236 (D. Del.
`2012); Inv. Tech. Grp., Inc. v. Liquidnet Holdings, Inc., 759 F. Supp. 2d 387,409
`(S.D.N.Y. 2010); Powell v. Home Depot U.S.A., Inc., 715 F. Supp. 2d 1285, 1290
`(S.D. Fla. 2010); Dura Glob. Tech., Inc. v. Magna Donnelly Corp., 665 F. Supp.
`2d 787, 789 (E.D. Mich. 2009); Cognitronics Imaging Sys., Inc. v. Recognition
`Research Inc., 83 F. Supp. 2d 689,691 (E.D. Va. 2000); Heil Co. v. Hartford
`Accidentandlndem. Co.,937F. Supp.1355, 1361 (E.D. Wis.1996);Inre
`Recombinant DNA Tech. Pat. and Contract Litig., 850 F. Supp. 769, 771 (S.D. Ind.
`1994).
`
`4
`
`

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`"culpability is generally measured against the knowledge of the [defendant] at the
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`time of the challenged conduct." Id. at 1933. The Court in Halo rejected the
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`Federal Circuit's requirement announced in In re Seagate Technology, LLC, 497
`
`F.3d 1360 (Fed. Cir. 2007) (en bane), that a patentee show "objective recklessness"
`
`in order to prove willful misconduct for § 284 purposes. Id. The Court reasoned
`
`that the "objective recklessness" test insulated many of the most culpable
`
`infringers from § 284' s punitive sanctions because it made dispositive invalidity
`
`and non-infringement defenses asserted at trial even if the infringer had not acted
`
`on the basis of those defenses or was even aware of them. Id. In the Court's
`
`words: "Under that standard, someone who plunders a patent-infringing it
`
`without any reason to suppose his conduct is arguably defensible--can
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`nevertheless escape any comeuppance under§ 284 solely on the strength of his
`
`attorney's ingenuity." Id. Thus, the Court held that, in cases where the asserted
`
`basis for enhanced damages is willful misconduct, it is "[t]he subjective willfulness
`
`of [the] patent infringer, intentional or knowing, [that] may warrant enhanced
`
`damages, without regard to whether his infringement was objectively reckless."
`
`Id.
`
`The Court's "intentional or knowing" clause makes clear that willful
`
`infringement is-at a minimum-knowing infringement. This standard is
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`consistent with the Supreme Court's holding in Global-Tech Appliances, Inc. v.
`
`5
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`

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`SEB S.A., 563 U.S. 754(2011), that "induced infringement under§ 27l(b) requires
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`knowledge that the induced acts constitute patent infringement." Id. at 766. Since
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`§ 284 enhanced damages are available in cases of induced infringement, see, e.g.,
`
`Barry v. Medtronic, Inc., 2019 WL 302886, at * 17 (Fed. Cir. Jan. 24, 2019);
`
`SynQor, Inc. v. Artesyn Techs., Inc., 709 F.3d 1365, 1385 (Fed. Cir. 2013); ACCO
`
`Brand, Inc. v. ABA Locks Mfrs. Co., 501 F.3d 1307, 1314 (Fed. Cir. 2007);
`
`Metabolite Labs., Inc. v. Lab. Corp. of Am. Holdings, 370 F.3d 1354, 1371 (Fed.
`
`Cir. 2004), and since, under Halo,§ 284's enhanced damages award is reserved
`
`only for egregious cases, it would seem incongruous if not illogical to require a
`
`lesser showing of culpability for enhanced damages under § 284 than for induced
`
`infringement under§ 271(b). And, indeed, the Federal Circuit emphasized in SRI
`
`International, Inc. v. Cisco Systems, Inc., 930 F.3d 1295 (Fed. Cir. 2019) that
`
`under Halo enhanced damages are available only if a showing of something more
`
`than intentional or knowing infringement is made:
`
`As the Supreme Court stated in Halo, "[t]he sort of
`conduct warranting enhanced damages has been
`variously described in our cases as willful, wanton,
`malicious, bad-faith, deliberate, consciously wrongful,
`flagrant, or-indeed-characteristic of a pirate." While
`district courts have discretion in deciding whether or not
`behavior rises to that standard, such findings "are
`generally reserved for egregious cases of culpable
`behavior." Indeed, as Justice Breyer emphasized in his
`concurrence, it is the circumstances that transform simple
`"intentional or knowing" infringement into egregious,
`sanctionable behavior, and that makes all the difference.
`
`6
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`

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`Id. ( emphasis in original) ( citations omitted).2
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`II. DISCUSSION
`
`Nevro argues that the summary judgment it seeks is warranted because it
`
`"lacked the pre-suit knowledge required for a finding that any alleged infringement
`
`of the[#] 193 and [#]933 patents was willful." D.I. 675 at 2. I agree that there is
`
`insufficient record evidence from which a rational juror could conclude that Nevro
`
`willfully infringed either patent before this suit was filed. Accordingly, I will grant
`
`Nevro's motion.
`
`2 I am aware that in Arctic Cat Inc. v. Bombardier Recreational Products Inc., 876
`F.3d 1350, 1371 (Fed. Cir. 2017), the Federal Circuit held that proof that a
`defendant "should have known that its actions constituted an unjustifiably high risk
`of infringement" was enough to establish willfulness under Halo. In so holding,
`the Court expressly rejected the defendant's argument that this "'should have
`known' standard contradicts Halo." Arctic Cat, 876 F.3d at 1371. Two other
`Federal Circuit decisions issued after Halo held that a plaintiff can establish
`willfulness for § 284 purposes with proof that "the defendant acted despite a risk of
`infringement that was either known or so obvious that it should have been known."
`WesternGeco L.L.C. v. Ion Geophysical Corp., 837 F.3d 1358, 1362 (Fed. Cir.
`2016) (internal quotation marks and citations omitted), rev'd on other grounds, 138
`S. Ct. 2129 (2018); see also WCM Indus., Inc. v. JPS Corp., 721 F. App'x 959,970
`(Fed. Cir. 2018) (citing Arctic Cat, 876 F.3d at 1371) (holding that in reviewing
`"under the new Halo standard" a district court's award of enhanced damages, "we
`must determine whether the evidence, when viewed in the light most favorable to
`[the plaintiff], was sufficient to prove by a preponderance of the evidence that [the
`defendant] acted despite a risk of infringement that was either known or so obvious
`that it should have been known to [the defendant]"). All three of these cases were
`decided before SRI, and, in my view, cannot be reconciled with Halo. I will
`therefore follow SRI.
`
`7
`
`

`

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`Boston Scientific makes two arguments in opposition to the motion. It
`
`argues first that summary judgment cannot be granted because "it is undisputed
`
`that Nevro knew about the [ #] 193 patent prior to the [ filing of the] Complaint."
`
`D.I. 713 at 1. Knowledge of a patent, however, is not sufficient to establish willful
`
`infringement of that patent. See Dynamic Data Techs., LLC v. Brightcove Inc.,
`
`2020 WL 4192613, at *5 (D. Del. July 21, 2020) ("To state a claim for enhanced
`
`damages based on willful infringement, ... [the plaintiff] must allege not only that
`
`[the defendant] had knowledge of the asserted patents, but also that [the defendant]
`
`had knowledge of its infringement of the asserted patents."). As noted above, at a
`
`minimum, willful infringement is knowing infringement. Knowledge of a patent is
`
`not the same thing as knowledge that a product or the use of that product infringes
`
`the patent. Boston Scientific has identified no fact from which it could plausibly
`
`be inferred that Nevro knew that its Senza System or the use of that system
`
`infringed the asserted patents.
`
`Boston Scientific' s second argument is that summary judgment is precluded
`
`because "Nevro was put on notice of Boston Scientific's [#]933 and[#] 193 Patents
`
`and its infringement of those patents at least as early as December 9, 2016, when
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`Boston Scientific filed its 2016 Complaint," and "[r]ather than make any effort to
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`design around Boston Scientific' s patents, Nevro launched two new infringing
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`products." D.I. 713 at 4 ( emphasis in the original). But a claim for willfulness-
`
`8
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`

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`based enhanced damages under§ 284 cannot be sustained "where the defendant's
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`alleged knowledge of the asserted patents is based solely on the content ofth[e]
`
`[operative] complaint or a prior version of th[at] complaint filed in the same
`
`lawsuit." ZapFraud, Inc. v. Barracuda Networks, Inc., 2021 WL 1134687, at *4
`
`(D. Del. Mar. 24, 2021).
`
`As I explained in Zapfraud:
`
`District courts across the country are divided over whether
`a defendant must have the knowledge necessary to sustain
`claims of indirect and willful infringement before the
`filing of the lawsuit.
`
`Current and recent judges of this District have also taken
`different views on the issue. Neither the Federal Circuit
`nor the Supreme Court has addressed the issue.
`
`I have held in prior opinions that the complaint itself
`cannot be the source of the knowledge required to sustain
`claims of induced infringement and willfulness-based
`enhanced damages. See VLSI Tech. LLC v. Intel Corp.,
`2019 WL 1349468, at *2 (D. Del. Mar. 26, 2019)
`( dismissing willfulness-based enhanced damages claim
`where the plaintiff had alleged that the defendant gained
`"knowledge of the [patent] at least since the filing of this
`complaint"); Dynamic Data Techs., LLC v. Brightcove
`Inc., 2020 WL 4192613, at *3 (D. Del. July 21, 2020)
`( dismissing
`induced
`infringement claims where the
`plaintiff had alleged that the defendant became "aware that
`its accused products allegedly infringe as of the filing of
`the Complaint"). Though not without doubts, I am "not
`persuaded by Plaintiff{'s] contention that the requisite
`knowledge can be established by the filing of the
`Plaintiff{'s] Complaint." Mallinckrodt, Inc. v. E-Z-Em
`Inc., 670 F. Supp. 2d 349,354 n.l. (D. Del. 2009) (Farnan,
`J.).
`
`9
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`

`

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`"The purpose of a complaint is to obtain relief from an
`existing claim and not to create a claim." Helios
`Streaming, LLC v. Vudu, Inc., 2020 WL 3167641, at *2
`n. l (D. Del. June 15, 2020). ZapFraud has identified, and
`I know of, no area of tort law other than patent
`infringement where courts have allowed a plaintiff to
`prove an element of a legal claim with evidence that the
`plaintiff filed the claim. The limited authority vested in
`our courts by the Constitution and the limited resources
`made available to our courts by Congress counsel against
`encouraging plaintiffs to create claims by filing claims. It
`seems to me neither wise nor consistent with principles of
`judicial economy to allow court dockets to serve as notice
`boards for future legal claims for indirect infringement and
`I agree with Judge Andrews's
`enhanced damages.
`statement in Cal/wave Communications LLC v. AT & T
`Mobility LLC, 2014 WL 5363741, at* 1 (D. Del. Jan. 28,
`2014), that "[t]here is a benefit to society if [a] matter is
`resolved without a suit." As Judge Andrews observed in
`Cal/wave, a pre-suit notice letter could very well lead "the
`patent holder and the asserted infringer [to] exchange
`information, and the asserted infringer might then take a
`license, or the patent holder might learn of reasons why
`suit should not be filed." Id.; see also Proxyconn Inc. v.
`Microsoft Corp., 2012 WL 1835680, at *5 (C.D. Cal. May
`16, 2012) ("[R]equiring a Plaintiff to plead knowledge
`based on facts other than the filing of the present lawsuit
`furthers judicial economy and preserves parties' resources
`by encouraging resolution prior to filing a lawsuit. Pre(cid:173)
`litigation attempts at resolution are especially desirable in
`patent cases, which are often expensive and thus resolved
`by settlement.").
`
`The policies that govern our patent system make the
`requirement of pre-suit knowledge of the asserted patents
`especially warranted for enhanced damages claims. Direct
`infringement is a strict liability tort. Enhanced damages
`under § 284 "are not to be meted out in a typical
`infringement case, but are instead designed as a 'punitive'
`
`10
`
`

`

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`infringement
`'vindictive' sanction for egregious
`or
`behavior." Halo Elecs., Inc. v. Pulse Elecs., lnc.,-U.S.
`- , 136 S. Ct. 1923, 1932, 195 L.Ed.2d 278 (2016).
`"The sort of conduct warranting enhanced damages has
`been variously described ... as willful, wanton, malicious,
`bad-faith, deliberate, consciously wrongful, flagrant, or(cid:173)
`indeed-characteristic of a pirate." Id. The purpose of
`enhanced damages is to punish and deter bad actors from
`egregious conduct, not to provide a financial incentive for
`opportunistic plaintiffs
`to spring suits
`for patent
`infringement on innocent actors who have no knowledge
`of the existence of the asserted patents. As the Federal
`Circuit noted in Gustafson, Inc. v. lntersystems Industrial
`Products, Inc., 897 F .2d 508 (Fed. Cir. 1990),
`
`[i]n our patent system, patent applications are
`secret, and patentees are authorized to sue
`"innocent" manufacturers immediately after
`their patents issue and without warning. To
`hold such patentees entitled to increased
`damages or attorney fees on the ground of
`willful infringement, however, would be to
`reward use of the patent system as a form of
`ambush.
`
`Id. at 511.
`
`Accordingly, in the absence of binding authority to the
`contrary from the Federal Circuit and Supreme Court, I
`will adopt the rule that the operative complaint in a lawsuit
`fails to state a claim for indirect patent infringement where
`the defendant's alleged knowledge of the asserted patents
`is based solely on the content of that complaint or a prior
`version of the complaint filed in the same lawsuit. And I
`conclude that the operative complaint in a lawsuit fails to
`state a claim for willfulness-based enhanced damages
`under § 284 where the defendant's alleged knowledge of
`the asserted patents is based solely on the content of that
`complaint or a prior version of the complaint filed in the
`same lawsuit.
`
`1 1
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`

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`2021 WL 1134687, at *3-*4 (footnotes omitted) (alterations in the original).3
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`Boston Scientific argues that "Nevro's launch of new products with
`
`knowledge of the[#] 193 and [#]933 Patents is conduct that distinguishes this case
`
`3 I noted in Zap.fraud and repeat here that
`
`[ n ]either of these rules prevents a plaintiff from filing in the future a
`new lawsuit alleging that the knowledge requirement is established
`based on the defendant's awareness of the previous lawsuit.
`Proxyconn, 2012 WL 1835680, at *6. I do not believe that requiring a
`plaintiff to bring a second suit as opposed to obtaining leave to
`supplement its complaint pursuant to Federal Rule of Civil Procedure
`15( d) will necessarily result in inefficiencies. See Fed. R. Civ. P.
`15( d) (providing that "[ o ]n motion and reasonable notice, the court
`may, on just terms, permit a party to serve a supplemental pleading
`setting out any transaction, occurrence, or event that happened after
`the date of the pleading to be supplemented"). The results of the first
`suit and estoppel doctrines would likely reduce substantially the scope
`of the second suit. In addition, having a second suit will avoid thorny
`privilege and attorney work product issues that arise when a defendant
`relies on the opinions of its trial counsel to form its own opinion about
`whether it infringes the asserted patents. Cf In re Seagate Tech.,
`LLC, 497 F.3d 1360, 1374 (Fed. Cir. 2007), abrogated on other
`grounds by Halo Elecs., Inc. v. Pulse Elecs., Inc., - U.S.--, 136
`S. Ct. 1923, 195 L. Ed. 2d 278 (2016) (en bane) (noting that
`"[b ]ecause willful infringement in the main must find its basis in
`prelitigation conduct, communications of trial counsel have little, if
`any, relevance warranting their disclosure, and this further supports
`generally shielding trial counsel from the waiver stemming from an
`advice of counsel defense to willfulness").
`
`2021 WL 1134687, at *4 n.4.
`
`12
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`

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`from Zapfraud." D.I. 713 at 5. But it does not explain why this discrepancy
`
`matters; and indeed, the discrepancy is the proverbial distinction without a
`
`difference.
`
`III. CONCLUSION
`
`For the reasons discussed above, I find that Boston Scientific has presented
`
`insufficient evidence to support a finding that Nevro willfully infringed the # 193
`
`and #933 patents. Accordingly, I will grant Nevro's motion for summary
`
`judgment (D.I. 673).
`
`The Court will issue an Order consistent with this Memorandum Opinion.
`
`13
`
`