The case pits two long-time allies in the development and sale of Negative Pressure Wound Treatment (NPWT) products. After licensing NPWT patents from and jointly prosecuting patent litigation with Wake Forest for nearly two decades, Kinetic Concepts changed tack. On In late February 2011, it sued for a judgment declaring that it owes Wake Forest no royalties under the license agreement, the patents covering its NPWT products are invalid, and its products do not infringe any valid or enforceable Wake Forest patents. In response, Wake Forest terminated the license and sued for damages. Id. at 4.
In mid-September 2013, the District Court held hearings on Wake Forest’s motion for summary judgment of no invalidity and claim construction.
Wake Forest’s motion contended that Kinetic Concepts was judicially estopped to challenge the validity of the disputed, having urged in prior proceedings that they were valid. Slip op. at 10. Whether the doctrine applied hinged on (a) whether Kinetic Concepts was adopting a “clearly inconsistent” position, (b) whether a court had accepted Kinetic Concepts’ prior position, and (c) whether fairness compelled the application of the doctrine. Id. The District Court determined that Kinetic Concepts’ current position was not “clearly inconsistent with its prior position because the combination of prior art that it relied upon was not identical to the combination at issue in prior litigation. Id. at 11. The District Court determined that the second prong—acceptance by a court—was satisfied. Id. at 13-14. Finally, the District Court determined that offsetting fairness considerations kept the fairness scale from weighing clearly in favor of the doctrine. Id. at 14-15.
The six terms the District Court construed were “healing,” “selected stage of healing,” “wound,” “treating,” “area of skin including and surrounding the room,” and “tissue surrounding the wound.” Slip op. at 15-28.
Measured by time to trial, the scheduled 29 months in this case is in line with the 29.9 months in the Northern District of California, the 28 months in the District of Delaware, and the 28.4 months in the Eastern District of Texas. See LegalMetric Time to Trial District Comparison—Patent Cases (January 2013).