Kirkland Wins Ruling Upholding $44 Million Verdict for Siemens in Medical Imaging Patent Case

In a case involving medical imaging technology, the U.S. Court of Appeals for the Federal Circuit voted 2-1 to uphold a $44 million patent infringement verdict that Siemens Medical Solutions USA won against rival Saint-Gobain Ceramics and Plastics, Inc. In addition, in Thursday's ruling the court sent the case back to the trial court after determining Siemens may be entitled to more damages.

Gregg LoCascio of Kirkland & Ellis represented Siemens and declined to comment. Carter Phillips of Sidley Austin represented Saint-Gobain and was traveling and unavailable for comment.

Siemens had sued Saint-Gobain in 2007 in Delaware federal district court for infringing Siemens's patent concerning the chemical composition of crystals used to convert gamma rays into light. These crystals help produce three-dimensional images of patients' organs that aid in diagnosing diseases like cancer. In September 2008, a jury found that Saint-Gobain's crystals, which consist of a different chemical compound, were functionally equivalent to the ones listed in Siemens's patent.

Saint-Gobain had claimed that its crystals were not equivalent and were protected under a separate patent. Additionally, Saint-Gobain argued that the trial court had instructed the jury to use the wrong burden of proof. The jury should have applied the higher clear and convincing evidence standard instead of the usual preponderance of the evidence standard, the company argued, because a finding of infringement would effectively invalidate Saint-Gobain's patent.

Judge Alan Lourie, in an opinion joined by Judge Richard Linn, found that the jury had been properly instructed. Lourie called Saint-Gobain's argument "interesting" and "not illogical," but heldheld that precedent was not on its side. (Note: The court's opinion erroneously switches the names of the counsel for the two sides.)

Lourie also found that the district court had abused its discretion when it lowered Siemens's damages award from $52.3 million to $44 million. He remanded the case for the lower court to determine a reasonable royalty rate for 18 additional scanners that were made before Siemens'spatent expired but weren't sold until afterwards.

In a dissent, Judge Sharon Prost wrote that she believed that the trial court had erred in its jury instructions. The court should have instructed the jury that it could find equivalence if the compounds described in the Saint-Gobain patent had advanced from the time of the alleged infringement so that"though previously nonobvious, [they] had become obvious and insubstantial."

Despite the loss, Saint-Gobain took heart in the split among the panel. "We are disappointed with this ruling," Karen Cawkwell, a spokeswoman for Saint-Gobain, said in a statement. "However, we note the strong dissenting opinion and we are evaluating our options for overturning the panel decision."

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