Magnolia Medical Technologies, Inc. v. Kurin, Inc.

CourtDistrict Court, D. Delaware
DecidedMay 14, 2024
Docket1:19-cv-00097
StatusUnknown

This text of Magnolia Medical Technologies, Inc. v. Kurin, Inc. (Magnolia Medical Technologies, Inc. v. Kurin, Inc.) is published on Counsel Stack Legal Research, covering District Court, D. Delaware primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Magnolia Medical Technologies, Inc. v. Kurin, Inc., (D. Del. 2024).

Opinion

IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE MAGNOLIA MEDICAL TECHNOLOGIES, INC., Plaintiff, v. Civil Action No.19-97-CFC_

KURIN, INC., Defendant.

Rodger Dallery Smith, II, Anthony David Raucci, MORRIS, NICHOLS, ARSHT & TUNNELL LLP, Wilmington, Delaware; Ashok Ramani, David J. Lisson, Micah G. Block, Philip T. Sheng, Ian Hogg, Serge A. Voronov, DAVIS POLK & WARDELL LLP, Menlo Park, California; Kathryn Bi, Alena Farber, DAVIS POLK & WARDELL LLP, New York, New York Counsel for Plaintiff Kelly E. Farnan, RICHARDS, LAYTON & FINGER, PA, Wilmington, Delaware; Catherine Nyarady, Kripa Raman, PAUL, WEISS, RIFKIND, WHARTON & GARRISON LLP, New York, New York; Nicholas Groombridge, GROOMBRIDGE, WU, BAUGHMAN & STONE LLP, New York, New York Counsel for Defendant

MEMORANDUM OPINION May 14, 2024 Wilmington, Delaware

CHIEF JUDGE Plaintiff Magnolia Medical Technologies, Inc. sued Defendant Kurin, Inc. for patent infringement. Magnolia alleged and a jury found at the conclusion of the first phase of the trial that Kurin directly infringed claims 1 and 24 of U.S. Patent No. 10,039,483 (the #483 patent) by making, selling, using, and offering for sale in the United States a blood sequestration device called the Kurin Lock. D.I. 437 at 2. (For ease of reference, I will at times refer to the Kurin Lock as “the Lock.”). In the second phase of the trial, the jury rejected Kurin’s defenses that the asserted claims were invalid and awarded Magnolia damages of $2,144,093. D.I. 443 at 3. Pending before me is Kurin’s Motion for Judgment of Non-Infringement as

a Matter of Law. D.I. 519. I. BACKGROUND A. The #483 Patent The #483 patent is titled “Fluid Diversion Mechanism for Bodily-Fluid Sampling.” D.I. 5-3 at 2 (#483 patent at 1). According to the patent’s “Summary,” the patent covers “[d]evices for parenterally-procuring bodily-fluid samples with reduced contamination from microbes exterior to the bodily-fluid source, such as dermally-residing microbes[.]” #483 patent at 2:14-16. The “Background” section of the patent notes that “[o]ne way in which contamination of a patient

sample may occur is by the transfer of microbes from a bodily surface (e.g., dermally-residing microbes) dislodged during needle insertion into a patient and subsequently transferred to a culture medium with the patient sample.” #483

patent at 1:56—-61. Claim 1 of the patent reads as follows: A blood sequestration device, comprising: a housing having an inlet port configured to be fluidically coupled to a patient and an outlet port configured to be fluidically coupled to a sample reservoir; a fluid reservoir disposed in the housing and at least partially defined by a seal member, the fluid reservoir configured to receive an initial volume of blood withdrawn from the patient; and

a vent disposed in the housing and configured to allow air to exit the housing as blood enters the fluid reservoir; the blood sequestration device further configured to allow a subsequent volume of blood to flow from the inlet port toward the outlet port via a sampling flow path, thereby bypassing the fluid reservoir and the initial volume of blood sequestered therein. #483 patent at claim 1. Claim 24 reads: A blood sequestration device, comprising: a lumen-containing device configured to be fluidically coupled to a patient; and a housing having an inlet port configured to be fluidically coupled to the lumen-containing device, and an outlet port

configured to be fluidically coupled to a sample reservoir, the housing defining a first fluid flow path and a second fluid flow path, the housing configured to transition from a first operating mode in which an initial volume of blood is allowed to flow from the inlet port toward a seal via the first fluid flow path, to a second operating mode in which a subsequent volume of blood is allowed to flow from the inlet port toward the outlet port via the second fluid flow path, the housing including a vent configured to allow air to exit the housing as blood enters the first fluid flow path, the seal configured to transition from a first state to a second state to place the housing in the second operating mode such that the subsequent volume of blood can flow toward the outlet port via the second fluid flow path and bypass the initial volume of blood sequestered in the first fluid flow path. #483 patent at claim 24. B. The Kurin Lock The Kurin Lock is a blood sequestration device used in conjunction with needles, tubes, vials and other medical devices to collect blood samples. In Kurin’s words, the Lock itself is used to “sequester[] the initial draw of blood upon initial venipuncture.” PTX-19 at 4; 7.25.22 Trial Tr. 139:20—21 (docketed as D.I. 504).

As illustrated below in Figure 1, the Lock is connected “upstream” to an inlet tube and a needle assembly that is used to pierce a patient’s vein. A “downstream” outlet tube connects the Lock to a vial adapter assembly that has a second needle that is used to pierce the sealed top of a sample collection bottle.

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Figure 1 D.I. 322 at 5 (circle and “Kurin Lock” notation added). As shown in the design drawing depicted below in Figure 2, the Lock has five parts: two pieces of molded plastic, an umbrella valve, a porous plug, and a

cap.

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A Sia YS . ITEMS 4 AND 6 HOT SHOWN rameoort__ (VALVE, UMBRELLA MATERIAL MLISIVI&G TRANSPARENT [7 _| | 1 | meio [Puc HYOROPHUCSAF SEAS [LAR | KURS002 |LWERICANT, MICROGAREMEDICAL OURAGUDEDRY | S_| AR | KURS0O0__|ADHESVE UGHTCURING TANGENT TeIOMT |_| pt | encore | 1 | muremes □□□□□□□□□□□□□□□□□□□□□□ =| [1 | mans froprousnrunuoce | po | moe ftw Figure 2 DTX-83. The two pieces of plastic are joined to form the housing of the Lock. The plug, valve, and cap are joined to create the so-called “dual valve assembly.” The plastic pieces that comprise the housing are molded such that when they are joined together, they accommodate the plug and valve and create two channels: a U-shaped channel and the so-called “sample channel.” The Lock’s components and channeling can be seen below in Figure 3, an annotated photograph made by Magnolia’s infringement expert, Dr. Juan Santiago:

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Figure 3 D.I. 455-1 at 23 (Santiago Opening Report at 26). Before taking the photograph, Dr. Santiago filled the Lock with red food dye “to highlight the flow channels.” D.I. 455-1 at 23 (Santiago Opening Report at 26). As shown in Figure 3, to use Dr. Santiago’s words: The [Kurin Lock] includes a housing, connections for inlet and outlet tubes, a Y-junction near the inlet, two daughter channels (the U-shaped diversion chamber and the sample channel), and the dual valve assembly. The dual valve assembly includes a one-way umbrella valve (difficult to see in this image) and a porous self-sealing plug which allows venting of air out of the U-shaped diversion chamber, The Y-junction is not easily visible in this image but includes an inlet channel and two daughter channels. D.I. 455-1 at 23 (Santiago Opening Report at 26). At the start of the blood collection procedure, the downstream end of the Kurin Lock system is sealed and not yet attached to the vial. D.I. 318 at 98

(Santiago Opening Report at 28). The collection procedure begins with the insertion of the upstream needle into the patient’s vein. The patient’s blood

pressure, which is greater than the air pressure in the inlet tube and Lock, causes the blood to flow into the inlet tube and enter the Lock. As illustrated below in Figure 4 (also taken from Dr.

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