Case 1:20-cv-00925-JFB-SRF Document 110 Filed 03/29/21 Page 1 of 26 PageID #: 6248
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`HOLOGIC, INC., a Delaware corporation; and
`CYTYC SURGICAL PRODUCTS, LLC, a
`Massachusetts limited liability company,
`Plaintiffs,
`
`v.
`MINERVA SURGICAL, INC., a Delaware
`corporation,
`
`Defendant.
`
`C.A. No. 20-925-JFB-SRF
`
`REDACTED - PUBLIC VERSION
`
`PLAINTIFFS’ OPENING BRIEF IN SUPPORT OF PLAINTIFFS’
`MOTION FOR SUMMARY JUDGMENT OF NO INVALIDITY
`
`Of Counsel:
`Matthew M. Wolf
`Marc A. Cohn
`Jennifer A. Sklenar*
`ARNOLD & PORTER KAYE SCHOLER LLP
`601 Massachusetts Ave., NW
`Washington, DC 20001-3743
`Telephone: (202) 942-5000
`matthew.wolf@arnoldporter.com
`marc.cohn@arnoldporter.com
`
`*Admitted in NY and CA only; practice
`limited to matters before federal courts and
`federal agencies.
`
`Ryan J. Casamiquela
`ARNOLD & PORTER KAYE SCHOLER LLP
`3 Embarcadero Center
`San Francisco, CA 94111-4024
`Telephone: (415) 471-3100
`ryan.casamiquela@arnoldporter.com
`marty.koresawa@arnoldporter.com
`
`Assad Rajani
`ARNOLD & PORTER KAYE SCHOLER LLP
`3000 El Camino Real
`Five Palo Alto Square, Suite 500
`Palo Alto, CA 94306
`Telephone: (650) 319-4500
`assad.rajani@arnoldporter.com
`
`Karen L. Pascale (#2903)
`Pilar G. Kraman (#5199)
`YOUNG CONAWAY STARGATT & TAYLOR LLP
`Rodney Square
`1000 North King Street
`Wilmington, DE 19801
`Telephone: (302) 571-6600
`kpascale@ycst.com
`pkraman@ycst.com
`
`Attorneys for Plaintiffs Hologic, Inc.
` and Cytyc Surgical Products, LLC
`
`March 22, 2021
`Redacted version: March 29, 2021
`
`

`

`Case 1:20-cv-00925-JFB-SRF Document 110 Filed 03/29/21 Page 2 of 26 PageID #: 6249
`
`
`TABLE OF CONTENTS
`
`INTRODUCTION............................................................................................................. 1
`
`SUMMARY OF ARGUMENT ........................................................................................ 2
`
`STATEMENT OF FACTS ............................................................................................... 3
`
`I.
`
`II.
`
`III. NATURE AND STAGE OF PROCEEDINGS ............................................................... 3
`
`IV.
`
`
`A. For More Than 5 Years, Minerva Litigated The Validity of the ’348 Patent—
`And Lost Decisively........................................................................................................... 3
`
`B. Minerva’s Invalidity Defenses In This Second Action Are Identical to The Invalidity
`Defenses and Counterclaims Subject to Final Judgment In The First Action ............ 6
`
`ARGUMENT ..................................................................................................................... 6
`
`V.
`
`
`A. Legal Standards ................................................................................................................ 6
`
`B. Minerva’s Invalidity Defenses Are Subject To Claim and Issue Preclusion ............... 8
`
`
`1. Minerva’s Invalidity Defenses Are Subject To Claim Preclusion ........................ 8
`
`a.
`
`All The Elements Of Claim Preclusion Apply ...................................... 8
`
`Minerva Fails To Raise Any Genuine Issues ...................................... 12
`
`2. Minerva’s Invalidity Defenses Are Subject To Issue Preclusion ....................... 14
`
`a.
`
`b.
`
`b.
`
`c.
`
`d.
`
`e.
`
`The Issues Are Identical ......................................................................... 14
`
`Minerva Actually Litigated Invalidity .................................................. 14
`
`The Court Entered Final Judgment Against Minerva ........................ 15
`
`The Determination Of Validity Was Essential To The Court’s Final
`Judgment ................................................................................................. 15
`
`Minerva Cannot Raise Any Genuine Disputes ..................................... 16
`
`C. Minerva’s Invalidity Defenses and Counterclaims Are Subject To Assignor
`Estoppel ............................................................................................................................ 20
`
`VI. CONCLUSION ............................................................................................................... 20
`
`
`
`i
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`

`

`Case 1:20-cv-00925-JFB-SRF Document 110 Filed 03/29/21 Page 3 of 26 PageID #: 6250
`
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Cases 
`
`Abbott GMBH & Co., KG v. Centocor Ortho Biotech, Inc.,
`870 F.Supp.2d 206 (D. Mass. 2012) ......................................................................................... 18
`Advanced Display Sys., Inc. v. Kent State Univ.,
`No. 3-96-CV-1480-BD , 2002 WL 1489555 (N.D. Tex. July 10, 2002) .................................. 18
`Applied Med. Res. Corp. v. U.S. Surgical Corp.,
`352 F. Supp. 2d 1119 (C.D. Cal. 2005) .................................................................................... 18
`Aspex Eyewear, Inc. v. Marchon Eyewear, Inc.,
`672 F.3d 1335 (Fed. Cir. 2012) .................................................................................................. 8
`Astrazeneca UK Ltd. v. Watson Labs., Inc. (NV),
`905 F. Supp. 2d 596 (D. Del. 2012) .......................................................................................... 17
`Biogen Int’l GmbH v. Amneal Pharms. LLC,
`No. CV 17-823 (MN), 2020 WL 5549084 (D. Del. Sept. 16, 2020) ........................................ 16
`Burlington N. R.R. v. Hyundai Merch. Marine Co.,
`63 F.3d 1227 (3d Cir. 1995) ....................................................................................................... 7
`CoreStates Bank, N.A. v. Huls Am., Inc.,
`176 F.3d 187 (3d Cir. 1999) ....................................................................................................... 7
`Crossroads Sys. (Tex.), Inc. v. Dot Hill Sys. Corp.,
`No. A-03-CA-754-SS , 2006 WL 1544621 (W.D. Tex. May 31, 2006) .................................. 18
`Dureiko v. United States,
`209 F.3d 1345 (Fed. Cir. 2000) .................................................................................................. 7
`Evonik Degussa GmbH v. Materia Inc.,
`53 F. Supp. 3d 778 (D. Del. 2014), adhered to on reconsideration, No. 09-CV-636
`(NLH/JS), 2015 WL 2393850 (D. Del. May 15, 2015) ............................................................ 17
`Fairchild Semiconductor Corp. v. Power Integrations, Inc.,
`No. CV 12-540-LPS, 2015 WL 1905871 (D. Del. Apr. 23, 2015) ........................................... 17
`Foster v. Hallco Mfg. Co., Inc.,
`947 F.2d 469 (Fed. Cir. 1991) .................................................................................................. 11
`Hologic, Inc. v. Minerva Surgical, Inc.,
`957 F.3d 1256 (Fed. Cir. 2020) .......................................................................................... 13, 14
`In re Bose Corp.,
`476 F.3d 1331 (Fed. Cir. 2007) .................................................................................................. 7
`Jean Alexander Cosmetics, Inc. v. L’Oreal USA, Inc.,
`458 F.3d 244 (3d Cir. 2006) ....................................................................................................... 7
`
`
`
`
`ii
`
`

`

`Case 1:20-cv-00925-JFB-SRF Document 110 Filed 03/29/21 Page 4 of 26 PageID #: 6251
`
`
`Marrese v. Am. Acad. of Orthopaedic Surgeons,
`470 U.S. 373 (1985) .................................................................................................................... 7
`Meritor Transmission Corp. v. Eaton Corp.,
`No. 1:01CV178, 2006 WL 3951711 (W.D.N.C. Sept. 26, 2006) ............................................. 18
`Montana v. United States,
`440 U.S. 147 (1979) .................................................................................................................... 8
`New Hampshire v. Maine,
`532 U.S. 752 (2001) .................................................................................................................... 7
`Orexo AB v. Actavis Elizabeth LLC,
`371 F. Supp. 3d 175 (D. Del. 2019) .................................................................................... 17, 18
`Pall Corp. v. Fisher Sci. Co.,
`962 F. Supp. 210 (D. Mass. 1997) ............................................................................................ 18
`Pharmacia & Upjohn Co. v. Mylan Pharm., Inc.,
`170 F.3d 1373 (Fed. Cir. 1999) ................................................................................................ 16
`PPC Broadband, Inc. v. Corning Gilbert Inc.,
`995 F. Supp. 2d 104 (N.D.N.Y. 2014) ...................................................................................... 18
`Princeton Digit. Image Corp. v. Konami Digit. Entm’t Inc.,
`No. 12-1461-LPS-CJB, 2017 WL 239326 (D. Del. Jan. 19, 2017) .......................................... 15
`Roche Palo Alto LLC v. Apotex, Inc.,
`526 F. Supp. 2d 985 (N.D. Cal. 2007),
`aff'd on other grounds, 531 F.3d 1372 (Fed. Cir. 2008) ........................................................... 18
`Rudolph Techs., Inc. v. Camtek Ltd.,
`No. 15-CV-1246 (WMW/BRT), 2016 WL 8668504 (D. Minn. Aug. 8, 2016) ........... 15, 18, 19
`S. Pac. R.R. Co. v. United States,
`168 U.S. 1 (1897) ........................................................................................................................ 8
`Senju Pharm. Co. v. Apotex Inc.,
`746 F.3d 1344 (Fed. Cir. 2014) .................................................................................... 7, 8, 9, 13
`Superior Indus., LLC v. Thor Glob. Enterprises Ltd.,
`700 F.3d 1287 (Fed. Cir. 2012) .................................................................................................. 6
`Synopsys, Inc. v. Mentor Graphics Corp.,
`814 F.3d 1309 (Fed. Cir. 2016) ................................................................................................ 15
`Taylor v. Sturgell,
`553 U.S. 880 (2008) .................................................................................................................... 7
`Unique Coupons, Inc. v. Northfield Corp.,
`No. 99 C 7445, 2000 WL 631324 (N.D. Ill. May 16, 2000) .................................................... 18
`VirnetX Inc. v. Apple Inc.,
`792 F. App’x 796 (Fed. Cir. 2019) ........................................................................................... 19
`
`
`
`
`iii
`
`

`

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`
`
`XpertUniverse, Inc. v. Cisco Sys., Inc.,
`No. 17-CV-03848-RS , 2018 WL 2585436 (N.D. Cal. May 8, 2018) ...................................... 18
`Zip Dee, Inc. v. Dometic Corp.,
`905 F. Supp. 535 (N.D. Ill. 1995) ............................................................................................. 18
`
`Rules 
`Fed. R. Civ. P. 56(a) ....................................................................................................................... 6
`
`
`
`
`iv
`
`

`

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`
`
`I.
`
`INTRODUCTION
`
`In this Second Action, invalidity is not an issue properly before the Court. Minerva spent
`
`more than five years attempting unsuccessfully to invalidate the ’348 Patent in three tribunals.
`
`First, it filed two separate petitions for inter partes review (“IPR”) of the ‘348 patent, but both of
`
`these were denied; the Patent Office did not find even a reasonable likelihood of invalidity under
`
`the more lenient preponderance of the evidence standard, as require to institute an IPR
`
`proceeding. In this Court, in Case No. 15-1031-JFB-SRF (“First Action”), the Court ruled on
`
`summary judgment that that assignor estoppel barred Minerva’s invalidity defenses and that, in
`
`any event, Minerva’s invalidity defenses failed on the merits regardless of assignor estoppel.
`
`The Court entered Final Judgment dismissing Minerva’s invalidity arguments with prejudice.
`
`The Federal Circuit then affirmed. Minerva’s invalidity defenses are now subject to issue
`
`preclusion and claim preclusion as well as assignor estoppel, because it fully litigated those
`
`issues in the First Action.
`
`The unusual circumstances of this case further compel the application of preclusion and
`
`estoppel. Hologic was forced to file this Second Action because Minerva concealed the fact that
`
`it had already begun commercializing its accused New Pivot Device prior to the July 2018 trial
`
`in the First Action. At the time, the parties disputed whether the New Pivot Device was an
`
`alleged non-infringing alternative for purposes of damages. But, to avoid having the New Pivot
`
`Device drawn into the First Action as an accused product—particularly after the Court found on
`
`summary judgment that Minerva’s original product infringed—Minerva’s witnesses and counsel
`
`represented that its New Pivot Device was not being commercialized. This ruse successfully
`
`secured a ruling from the Court on summary judgment that the New Pivot Device was not
`
`properly an accused device because it was “not being marketed.” At trial, Hologic presented
`
`expert testimony that the New Pivot Device still infringed the ’348 Patent (as Minerva had relied
`
`1
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`

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`
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`on the device as a hypothetical non-infringing alternative in an effort to reduce damages). In
`
`response, Minerva’s witnesses suggested they were unaware of the re-design, and its counsel
`
`represented that Minerva was no longer relying on the re-design at trial. Based on these
`
`representations, Hologic agreed to permit Minerva to withdraw the New Pivot Device from the
`
`trial. It was only months later, in post-trial briefing, that Minerva revealed the fact that it had
`
`commercialized the New Pivot Device well before the trial.
`
`Thus, Hologic was forced to file this Second Action to obtain damages for Minerva’s
`
`infringing New Pivot Device. Minerva now asserts that it may relitigate invalidity, but these
`
`defenses should be dismissed with prejudice as a matter of law under the doctrines of issue
`
`preclusion, claim preclusion, and assignor estoppel.
`
`II.
`
`1.
`
`SUMMARY OF ARGUMENT
`
`Minerva’s affirmative defenses of invalidity are subject to claim preclusion. Its
`
`affirmative defenses of invalidity and counterclaim of invalidity were dismissed with prejudice
`
`and are subject to a Final Judgment in the First Action. Both Actions involved the same parties,
`
`the same patent, the same claim constructions, and the accused New Pivot Device is the same
`
`design that Minerva alleged in the First Action was a non-infringing alternative. Minerva’s core
`
`technical documents, customer testing, marketing and representations to the FDA all further
`
`confirm that the accused New Pivot Device is also essentially the same as the original Minerva
`
`EAS handpiece that was found to infringe in the First Action.
`
`2.
`
`Minerva’s affirmative defenses of invalidity are also subject to issue preclusion. Its
`
`affirmative defenses of invalidity and obviousness-type double patenting are the same as in the
`
`First Action. Minerva had a full and fair opportunity to litigate each of its defenses and
`
`counterclaims in the First Action and it did so, challenging the validity of each Asserted Claim in
`
`this Second Action. It alleged invalidity at the preliminary injunction stage, served invalidity
`
`2
`
`

`

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`
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`contentions challenging the ’348 Patent as obvious, not enabled, lacking adequate written
`
`description, and invalid for obviousness-type double patenting, and served numerous discovery
`
`responses continuing to assert these defenses—even after many of them were rejected by the
`
`Patent Office. At no point in the First Action was Minerva procedurally limited in what
`
`invalidity theories it was allowed to pursue. Its invalidity defenses and counterclaims were
`
`dismissed with prejudice and those were essential to the Court’s Final Judgment adjudicating
`
`Minerva as an infringer and awarding Hologic damages.
`
`3.
`
`In addition, Minerva is also estopped from challenging the validity of the ’348 Patent
`
`because it is subject to assignor estoppel for the same reasons the Court found in the First Action
`
`(and is precluded from re-litigating assignor estoppel in this Second Action).
`
`III. NATURE AND STAGE OF PROCEEDINGS
`
`Hologic initiated this Action on July 8, 2020. (D.I. 1.) Hologic is presently asserting
`
`claims 1, 3, 8, and 12 of U.S. Patent No. U.S. Patent No. 9,095,348 (“the ʼ348 Patent”)
`
`(collectively, the “Asserted Claims”). (Ex. 1)1 The parties completed fact and expert discovery
`
`on December 30, 2020 and March 11, 2021, respectively. Trial is scheduled for August 23, 2021
`
`for five days. (D.I. 20, ¶ 16; February 26, 2021 Docket Order Regarding D.I. 80.)
`
`IV.
`
`STATEMENT OF FACTS
`
`A.
`
`For More Than 5 Years, Minerva Litigated The Validity of the ’348
`Patent—And Lost Decisively.
`
`Hologic filed the First Action in November 2015. (F.A., D.I. 1.) In its Answer and
`
`Counterclaims in the First Action, Minerva alleged that the ’348 Patent was invalid and broadly
`
`sought declaratory judgments of invalidity as to “each and every claim of the ’348 patent” for
`
`
`1 The Exhibits cited herein are attached to the accompanying Declaration of Mark A. Cohn.
`
`3
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`

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`reasons “including but not limited to §§ 101, 102, 103, and/or 112.” (F.A., D.I. 83 at 12-13, 24-
`
`25.) This included a Third Affirmative Defense for invalidity, Ninth Affirmative Defense for
`
`obviousness-type double patenting, and Seventh Counterclaim for declaratory judgment of
`
`invalidity of the ’348 patent. (Id.)
`
`In March 2016, Minerva opposed a motion for preliminary injunction in the First Action
`
`by asserting that the ’348 Patent was invalid for lack of enablement, “based on obviousness-type
`
`double patenting,” and because all claims of the ’348 Patent were invalid based on the prior art
`
`identified in Minerva’s IPR petitions. (F.A., D.I. 86 at 18, 20.) In September 2016, the Patent
`
`Office denied institution of Minerva’s IPR petitions, rejecting Minerva’s arguments that the
`
`claims were obvious under 35 U.S.C. § 103 over myriad combinations of the Edwards, Yoon,
`
`Ortiz, Nady-Mohamed, Jing, and Lichtman references. (Exs. 58 and 59.) Notably these
`
`findings were made in view of the broader claim constructions and lower burden of proof
`
`(preponderance of the evidence) applicable to IPR proceedings.
`
`Minerva continued to litigate its prior art-based invalidity defenses in the First Action.
`
`On September 30, 2016, it served invalidity contentions challenging the ’348 Patent as allegedly
`
`obvious, not enabled, lacking adequate written description, and invalid for obviousness-type
`
`double patenting. (Ex. 62 at 9-13, 39-80 (Excerpt, September 30, 2016 Invalidity Contentions).
`
`In those contentions, Minerva challenged the validity of every claim now asserted in this Second
`
`Action. In November 2016, the Patent Office denied Minerva’s requests for rehearing on both
`
`petitions. (Exs. 60 and 61.) But, again, Minerva continued to litigate the same defenses in the
`
`district court. In December 2016, Minerva alleged in its discovery responses that “the Patents-
`
`in-Suit are invalid” and incorporated by reference its arguments from its “petitions for inter
`
`4
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`

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`
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`partes review of the Patents-in-Suit” (even though they had been denied) as well as “the reasons
`
`set forth in Minerva’s Invalidity Contentions served on September 30, 2016.” (Ex. 63 at 6.)
`
`In April 2017, for reasons known only to Minerva, it removed its prior art invalidity and
`
`obviousness-type double patenting defenses from its invalidity contentions. (See Ex. 64 at 9-13,
`
`20-24); Ex. 65 at 7-11, 20-28 (May 17, 2017 Second Supplemental Invalidity Contentions).) In
`
`January 2018, following voluminous fact and expert discovery, both parties filed cross-motions
`
`for summary judgment as to what remained of Minerva’s invalidity defenses. (F.A., D.I. 277 at
`
`1; F.A., D.I. 287 at 1.)
`
`In June 2018, the Court rejected Minerva’s remaining invalidity defenses and held that
`
`the ’348 Patent was not invalid as a matter of law for non-enablement or inadequate written
`
`description. (F.A., D.I. 407 at 24-26.) The Court found that “even if Minerva were not estopped
`
`from raising the defense, the court would find Minerva’s motion for a summary judgment of
`
`invalidity lacks merit.” (Id..) The Court rejected Minerva’s invalidity defenses on the merits and
`
`granted summary judgment for Hologic because: (1) “Minerva’s emphasis on the accused device
`
`and its plasma formation feature reflects its misguided notion that the improvements over the
`
`claimed material (the plasma formation feature) would have to have been disclosed”; (2) as to
`
`undue experimentation, “[t]he evidence shows that any such experimentation would involve
`
`repetition of commonly known or used techniques and application of techniques well known in
`
`the art”; (3) Minerva’s argument that exemplary embodiments in the specification “define ‘the
`
`invention’ and require a ‘moisture transport system’ with a ‘permeable external array’” were
`
`previously rejected during the claim construction and “would serve to improperly limit th[e]
`
`claims”; (4) any alleged undue experimentation to practice “applicator head,” “indicator
`
`mechanism,” and “one or more electrodes” “focus on the amount of experimentation necessary
`
`5
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`

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`
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`to make Minerva’s EAS, which is not the relevant enablement analysis”; (5) “Minerva’s Section
`
`112 arguments rest on a flawed definition of the claims that ignores the court’s claim
`
`constructions”; and (6) Hologic showed that the ’348 Patent was enabled and described. (Id.)
`
`Minerva admits this history in its Answer in this case. (D.I. 10, ¶ 30.) In June 2019, the Court
`
`entered Final Judgment in favor of Hologic and dismissed all of Minerva’s counterclaims. (F.A.,
`
`D.I. 621.) Minerva then appealed—and lost again. Following the Federal Circuit’s mandate,
`
`this Court entered in August 2020 an Amended Final Judgment once again dismissing all of
`
`Minerva’s invalidity defenses and counterclaims. (F.A., D.I. 647.)
`
`B. Minerva’s Invalidity Defenses In This Second Action Are Identical to
`The Invalidity Defenses and Counterclaims Subject to Final
`Judgment In The First Action
`
`In its Answer in this Second Action, Minerva asserts two invalidity defenses. In its Third
`
`Affirmative Defense for invalidity, Minerva asserts that “one or more asserted claims of the ’348
`
`Patent are invalid for failing to meet the conditions for patentability in 35 U.S.C. §§ 101, 102,
`
`103, and/or 112.” (D.I. 10 at 15.) In its Sixth Affirmative Defense, Minerva alleges that “the
`
`asserted claims of the ’348 Patent are subject to the doctrine of obviousness-type double
`
`patenting..” (Id.) These are identical to its defenses and counterclaims from the First Action.
`
`(Compare D.I. 10 at 15 with F.A., D.I. 83 at 12-13, 24.)
`
`V.
`
`ARGUMENT
`A.
`
`Legal Standards
`
`Summary judgment is appropriate when “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).
`
`Claim preclusion (also called “res judicata”) is also an issue of law. Superior Indus.,
`
`LLC v. Thor Glob. Enterprises Ltd., 700 F.3d 1287, 1291 (Fed. Cir. 2012) (citing In re Bose
`
`6
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`

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`
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`Corp., 476 F.3d 1331, 1334 (Fed. Cir. 2007)). Claim preclusion bars “successive litigation of the
`
`very same claim, whether or not relitigation of the claim raises the same issues as the earlier
`
`suit.” Taylor v. Sturgell, 553 U.S. 880, 892 (2008) (quoting New Hampshire v. Maine, 532 U.S.
`
`752, 748 (2001)); see also Marrese v. Am. Acad. of Orthopaedic Surgeons, 470 U.S. 373, 390–
`
`91 (1985) (“[A] party is precluded from asserting a claim that he had a ‘full and fair opportunity’
`
`to litigate in a prior action.”). Claim preclusion applies where: “(1) a final judgment on the
`
`merits in a prior suit involving[] (2) the same parties or their [privies]; and (3) a subsequent suit
`
`based on the same cause of action.” Senju Pharm. Co. v. Apotex Inc., 746 F.3d 1344, 1348 (Fed.
`
`Cir. 2014) (citing CoreStates Bank, N.A. v. Huls Am., Inc., 176 F.3d 187, 194 (3d Cir. 1999))
`
`(alterations in original). Whether a particular cause of action is the same as or different from
`
`another cause of action is determined by Federal Circuit law. Id.
`
`The doctrine of issue preclusion (also called “collateral estoppel”) is an issue of law.
`
`Dureiko v. United States, 209 F.3d 1345, 1355 (Fed. Cir. 2000). Issue preclusion bars
`
`“‘successive litigation of an issue of fact or law actually litigated and resolved in a valid court
`
`determination essential to the prior judgment,’ even if the issue recurs in the context of a
`
`different claim.” Taylor, 553 U.S. at 892 (quoting New Hampshire, 532 U.S. at 748-49; see also
`
`Marrese, 470 U.S. at 390–91 (“[A] party is precluded from asserting a claim that he had a ‘full
`
`and fair opportunity’ to litigate in a prior action.”). Issue preclusion applies where: “(1) the issue
`
`sought to be precluded [is] the same as that involved in the prior action; (2) that issue [was]
`
`actually litigated; (3) it [was] determined by a final and valid judgment; and (4) the
`
`determination [was] essential to the prior judgment.” Burlington N. R.R. v. Hyundai Merch.
`
`Marine Co., 63 F.3d 1227, 1231-32 (3d Cir. 1995) (alteration in original); see also Jean
`
`Alexander Cosmetics, Inc. v. L’Oreal USA, Inc., 458 F.3d 244, 249 (3d Cir. 2006). In the
`
`7
`
`

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`
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`context of patent infringement, Federal Circuit law applies in determining whether the “identity
`
`of the issue” requirement of issue preclusion is met. See, e.g., Aspex Eyewear, Inc. v. Marchon
`
`Eyewear, Inc., 672 F.3d 1335, 1341 n.1 (Fed. Cir. 2012).
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`The application of these doctrines “is central to the purpose for which civil courts have
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`been established, the conclusive resolution of disputes within their jurisdictions.” Montana v.
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`United States, 440 U.S. 147, 153 (1979). “[A] fundamental precept of common-law adjudication
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`. . . is that a ‘right, question or fact distinctly put in issue and directly determined by a court of
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`competent jurisdiction . . . cannot be disputed in a subsequent suit between the same parties or
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`their privies . . . ’” Id. (quoting S. Pac. R.R. Co. v. United States, 168 U.S. 1, 48-49 (1897)).
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`Thus, precluding parties from re-litigating matters they had a full and fair opportunity to litigate
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`in an earlier case “protects their adversaries from the expense and vexation attending multiple
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`lawsuits, conserves judicial resources, and fosters reliance on judicial action by minimizing the
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`possibility of inconsistent decisions.” Id. at 153-54.
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`B. Minerva’s Invalidity Defenses Are Subject To Claim and Issue
`Preclusion
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`Minerva lost decisively on its myriad invalidity challenges in the First Action, and it is
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`barred from reviving these same defenses in this Second Action.
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`1.
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`Minerva’s Invalidity Defenses Are Subject To Claim Preclusion
`a.
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`All The Elements Of Claim Preclusion Apply
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`First, the First Action resulted in a “final judgment on the merits.” Senju, 746 F.3d at
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`1348. Minerva’s affirmative defenses of invalidity and its declaratory judgment counterclaim of
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`invalidity were each dismissed with prejudice in the First Action in the Court’s Final Judgment
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`and Amended Final Judgment. (F.A., D.I. 621; F.A., D.I. 647.)
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`Second, the prior suit involved “the same parties or their [privies]” because all parties on
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`both sides are identical. Senju, 746 F.3d at 1348. Minerva concedes the same. (D.I. 61 at 17
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`(First Action “involves the same parties, the same patent, and overlapping validity issues.”).)
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`Third, this Second Action is a “subsequent suit based on the same cause of action.”
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`Senju, 746 F.3d at 1348. A Second Action where an accused infringer seeks to relitigate
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`invalidity is considered the same cause of action where both suits involve the same patent and
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`the accused products are the same or “essentially the same.” Senju, 747 F.3d at 1349. In the First
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`Action, which involved the same asserted ’348 Patent, Minerva filed a counterclaim broadly
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`seeking a declaration of invalidity of “each and every claim of the ’348 patent” and served
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`invalidity contentions as to each Asserted Claim in this Second Action. (F.A., D.I. 83 at 24; Ex.
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`62 at 9-13, 39-80.) Minerva’s counterclaim was dismissed with prejudice and is subject to a
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`Final Judgment.
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`The New Pivot Device that is accused in this Second Action is the same design that
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`Minerva alleged was a non-infringing alternative in the First Action. (Compare D.I. 26 Ex. G
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`(commercial version), with D.I. 26, Ex. H (prototype version).) In the First Action, the parties
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`disputed whether the New Pivot Device would still infringe the ’348 Patent. Specifically,
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`Minerva took the position that its New Pivot Device was a non-infringing alternative, so the
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`parties litigated for years (including at trial) whether an opinion of counsel regarding the New
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`Pivot Device2 was reliable, whether the New Pivot Device still infringed the ’348 Patent,
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`exchanged expert reports on those topics, and took fact and expert depositions regarding the New
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`2 Minerva relies on the same opinion of counsel from January 2017 in this Second Action. (D.I.
`47 at 2.) Minerva’s expert and patent counsel admitted that “
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`” of the handpiece and “
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`
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`.” (Ex. 6 (Magen Rebuttal Report, ¶ 14).)
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`Pivot Device. (See generally Exs. 5, 6, 56. 66, 67, 68, and 69.) Whether the New Pivot Device
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`was a non-infringing alternative (as well as invalidity) were litigated using the same claim
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`constructions the Court has adopted in this Second Action. (D.I. 20., ¶ 9.)
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`In the First Action, the Court also addressed one of Minerva’s non-infringement
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`arguments based on prosecution history estoppel. The Court denied Minerva’s “Motion for
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`Summary Judgment on the Doctrine of Equivalents and Prosecution History Estoppel,” rejecting
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`Minerva’s position that Hologic was precluded from asserting that the New Pivot Device did not
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`infringe. (D.I. 407 at 26-29 (“Minerva contends that Hologic elected to narrow the scope of
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`what issued as independent claim 1 of the ’348 Patent . . . and accordingly, prosecution history
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`estoppel operates to foreclose Hologic from relying on the doctrine of equivalents to allege
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`infringement” of “Minerva’s new pivot handle”).) The Court found “no clear and unmistakable
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`surrender of all equivalents to the pivot point limitation” and was “not convinced that the added
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`detail is more than tangential to patentability.” (Id. at 29.) At trial, Hologic’s expert offered
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`unrebutted testimony about why the New Pivot Device still infringed the ’348 Patent (and was,
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`therefore, not a design-around for damages purposes). (F.A., D.I. 511 at 1502:15-1503:22.)
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`During trial, Minerva claimed it was no longer relying on the New Pivot Device as a non-
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`infringing alternative, again concealing that the New Pivot Device was already commercialized.
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`Thus, the reason the Court did not reach the ultimate issue of infringement for the New Pivot
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`Device was because Minerva misleadingly concealed its commercialization of the New Pivot
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`Device, ultimately prompting this Second Action.
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`The accused New Pivot Device in this Second Action is also “essentially the same” as the
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`original Minerva EAS handpiece that was found to infringe in the First Action. Every
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`component of the New Pivot Device is identical to the original handpiece except for the spring
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`added to the handle