Free Letter - District Court of Delaware - Delaware

Case 1:07-cv-00190-SLR Document 173 Filed 09/05/2008 Page 1 ot 3
Kelly E. Farnan
302-651 -7705
Farnan@r|f.com
September 5, 2008
VIA E-FILING
The Honorable Sue L. Robinson
United States District Court
J. Caleb Boggs Federal Building
844 North King Street
Wilmington, DE 19801
Re: Siemens Medical Solutions USA, Inc. v.
Saint-Gobain Ceramics and Plastics, Inc.,
C.A. No. 07-190
Dear Judge Robinson;
During the pretrial conference held on August 28, 2008, the Court directed defendant
Saint-Gobain Ceramics & Plastics, Inc. ("Saint-Gobain") to provide authority to demonstrate the
relevance of evidence Saint-Gobain proposes to admit at trial respecting versions of the High
Resolution Research Tomograph ("HRRT") scanner manufactured by plaintiff Siemens Medical
Solutions USA, Inc. ("Siemens"), or a Siemens’ predecessor—in—interest, incorporating both a
lutetium oxyorthosilicate (“LSO") scintillator and a lutetium yttrium orthosilicate ("LYSO")
scintillator containing 70 percent yttrium (“‘70% Y LYSO"). This submission complies with the
Court’s request.
Saint-Gobain’s evidence respecting the HRRT scanners at issue will show that (1) during
a period ending in or around 2006, Siemens and its predecessor, CTI PET Systems, Inc. ("CTI"),
manufactured at least a dozen HRRT scanners containing a "phoswich" detector incorporating a
combination of LSO and 70% Y LYSO crystals; (2) the "phoswich" detector was designed to
exploit the different scintillation properties of LSO and 70% Y LYSO —- including a significant
difference in decay times between the two crystals -- so as to enable Siemens’ HRRT scanners to
render highly detailed images of areas of interest in the bodies of patients; (3) Siemens or CTI
delivered these scanners to leading medical research institutions both in the United States and
abroad, including Johns Hopkins and Yale University Hospitals, some of which continue to use
the scarmers to conduct neurological and other research; (4) just as Saint-Gobain’s accused
I I I
One Rodney Square I 920 North King Street I Wilmington, DE 19801 I Phone: 302-651-7700 I Fax; 302-651-7701
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Case 1:O7—cv-OO190—SLFl Document 173 Filed O9/05/2008 Page 2 of 3
The Honorable Sue L. Robinson
September 5, 2008
Page 2
PreLude 420 LYSO crystal containing approximately 10 percent yttrium, the 70% Y LYSO
crystals incorporated in the Siemens HRRT scanners fall within the literal scope of Claim 1 of
U.S. Patent No. 6,624,420 (the "‘42O patent"); (5) the ‘420 patent was issued over U.S. Patent
No. 4,958,080 (the "‘O80 patent”) as a reference; (6) prior to the issuance of the ‘420 patent, the
United States Patent and Trademark Office ("USPTO”) had issued another LYSO patent, U.S.
Patent No. 6,323,489 Bl (the "‘489 patent"’), also over the ‘080 patent (with the ‘489 patent
being subsequently cancelled in connection with an interference proceeding that resulted in the
issuance of the ‘420 patent); (7) Saint-Gobain manufactures and sells its PreLude 420 LYSO
crystals under a license from the University of Central Florida; and (8) Siemens (which holds no
license under the ‘42O patent) has admitted that the 70% Y LYSO crystals incorporated in its
HRRT scanners do not infringe the ‘080 patent.
This Court acknowledged in its January 8, 2008 Memorandum Opinion denying
Siemens’ preliminary injunction motion that the separate patentability of Saint—Gobain’s accused
PreLude 420 LYSO crystal is both "relevant" to the central question of infringement under the
Doctrine of Equivalents and “entitled to due weight.” Siemens Med. Solutions United States, Inc.
v. St.-Gobain Ceramics & Plastics, Inc., 2008 U.S. Dist. LEXIS 1486 (D. Del. Jan. 8, 2008)
(quoting National Presto Indus., Inc. v. West Bend Co., 76 F .3d 1185, 1192 (Fed. Cir. 1996).
Indeed, the fact that the USPTO granted the ‘420 Patent even in the face of the ‘080 Patent is
compelling evidence that the USPTO considered the LYSO crystal both non—obvious and
inventive. The Federal Circuit held last year that “We have not directly decided whether a
devicemnovel and separately patentable because of the incorporation of an equivalent feature---
may be captured by the doctrine of equivalents, although we have held that when a device that
incorporates the purported equivalent is in fact the subject of a separate patent, a finding of
equivalency, while perhaps not necessarily legally foreclosed, is at least considerably more
difficult to make out. But there is a strong argument that an equivalent cannot be both non-
obvious and insubstantial." Festo Corp. v. Shoketusa Kinzokn Kogyo Dabashiki Co. Ltd., 493
F.3d 1368, 1380 (Fed. Cir. 2007)(footnotes omitted).
The undisputed relevance of the separate patentability of Saint—Gobain’s PreLude 420
LYSO crystal containing 10 percent yttrium establishes the relevance of the separate
patentability of the 70% Y LYSO crystals incorporated in Siemens’ HRRT scanners. Far from
vitiating that relevance, Siemens’ contention that the 70% Y LYSO compound does not infringe
the ‘080 patent concedes that the difference between that crystal and LSO is not insubstantial.
And, since both LYSO formulations meet the limitations of at least Claim l of the ‘42O patent,
Siemens’ concession and Saint—Gobain’s other evidence regarding Siemens’ HRRT scanner
fiirther demonstrates Saint—Gobain’s non—infringement of the ‘080 patent. Siemens contends that
this evidence would confuse the jury. Not so: the true meaning of Siemens’ argument is that it
does not want the jury to learn that Siemens argues that the USPTO made a mistake as to sonie
of the formulations of LYSO, but not others; and just where the line is drawn, Siemens does not
say. Indeed, Siemens refused to answer Saint-Gobain’s Requests for Admission directed at ·
ascertaining the point in the range of LYSO formulations claimed under the ‘420 patent that
Siemens argues separates supposedly infringing from non—infringing LYSO, though neither the
claims of the ‘420 Patent nor the USPTO that granted the patent draw that supposed distinction.
RLF1—33l8458—l

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