This is a patent infringement case. Cohesive Technologies, Inc. (“Cohesive”) brought three related actions accusing Waters Corporation (“Waters”) of infringing U.S. Patent No. 5,772,874 (the “’874 patent”) and U.S. Patent No. 5,919,368 (the “’368 patent”). In the first action, No. 98-CV-12308, Cohesive accused Waters’s 30 μm Oasis high-performance liquid chromatography (“HPLC”) columns (the “30 μm columns”) of infringing the ’874 patent. See Cohesive Techs., Inc. v. Waters Corp., 526 F. Supp. 2d 84, 88 (D. Mass. 2007). In the second action, No. 99-CV-11528, Cohesive accused the same 30 μm columns of infringing the ’368 patent. See id. In the third action, No. 01-CV-12307, Cohesive accused Waters’s 25 μm Oasis HPLC columns (the “25 μm columns”) of infringing both patents. See id.
A jury in the first action found that the ’874 patent was not invalid, and that the 30 μm columns infringed the ’874 patent. See id. The district court then held a combined bench trial and hearing on damages, willful infringement, and inequitable conduct in the first action, and on preliminary injunction and summary judgment motions in the second and third actions. The district court entered judgment in favor of Cohesive in the first action, granted Cohesive’s motion for summary judgment of infringement and no invalidity in the second action, and awarded damages. Id. at 126. However, in the third action, the district court granted Waters’s motion for summary judgment of noninfringement, concluding that the 25 μm products did not infringe either patent. Id. Both parties appeal numerous aspects of the judgment.
As to the 30 μm products, we conclude that the district court correctly construed the term “rigid” and properly denied Waters’s motion for judgment of noninfringement as a matter of law. We further conclude that the district court committed no clear error in concluding that Waters failed to prove the deceptive intent necessary to sustain its claim of inequitable conduct. However, we agree with Waters that the district court was wrong to enter judgment as a matter of law on anticipation without submitting the issue to the jury.
As to the 25 μm products, we disagree with the district court’s construction of “greater than about 30 μm.” Under the correct construction, Waters was not entitled to summary judgment of no literal infringement. The district court was, however, correct to grant Waters’s motion for summary judgment of no infringement under the doctrine of equivalents, though not for the reasons that the district court articulated.
As to damages, because the district court incorrectly considered the 25 μm product as an acceptable noninfringing substitute, and because it is unclear whether the other available product, standing alone, would have been an acceptable substitute, we vacate the district court’s judgment that Cohesive was not entitled to lost profits and remand for reconsideration by the district court in the first instance. We find no clear error in the district court’s conclusion that Waters’s infringement was not willful. Finally, we decline Cohesive’s request to assign this matter to a different district court judge on remand.
Accordingly, we affirm-in-part, reverse-in-part, vacate-in-part, and remand.
