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Facts: On 9 March 2011, the Minister of Education announced that Advocate Shimon Mizrahi would be awarded the 2011 Israel Prize in the field of sports, upon the recommendation of the Israel Prize Judging Committee. The members of the Judging Committee were Tal Brody, an renowned basketball player who had played for the Maccabee Tel-Aviv basketball team, and who was awarded the Israel Prize in 1979, Gili Lustig, the head of the competitive sports section of the Israel Olympic Committee and a coach of the Israel All-Star volleyball team, and Esther Roth-Shachamorov, a celebrated athlete who had represented Israel at the 1976 Olympic Games, and who was awarded the Israel Prize in 1999. The Petitioners asked that the Court annul the decision, arguing that Brody had acted under a conflict of interests because Advocate Mizrahi had served for many years as the chairman of the Maccabee Tel Aviv basketball team, and he and Brody were professionally and socially acquainted.
Held: In rejecting the petition, the Court held that the scope of Court’s intervention in decisions concerning the granting of the Israel Prize should be significantly limited, particularly in regard to claims regarding the worthiness of the recipients. Restraint should also be exercised in regard to claims addressing the award procedures.
The choice of recipients of the Israel Prize is almost entirely non-justiciable, and should be treated, mutatis mutandis, in accordance with the provisions of section 33 of the Contracts (General Part) Law, 5733-1973. The choice of recipients of the Israel Prize involves a significant subjective element. The greater the subjective component of the decision, the narrower the scope of judicial review.
As for conflicts of interest, the members of each judging committee must be people who are well acquainted with the particular field. It is but natural that the members of the committee will be people from that field or related fields. It is hard to imagine that those qualified to serve on the judging committee would not be acquainted with the candidates. If the Court were to adopt a broad approach to conflicts of interest in this regard, it might not be possible to find any person in Israel qualified to serve on an Israel Prize committee. A broad approach in regard to conflicts of interest might also limit the pool of appropriate candidates for the prize, inasmuch as an acquaintance between a member of the committee and a potential candidate would result in the disqualification of the candidate, regardless of his achievements.
Although, the Court should adopt a restricted approach to judicial review of decisions in regard to the Israel Prize, not all such decisions are immune to review. The Court would certainly address issues of corruption or serious flaws in the conduct of the judging committee or the Minister of Education, even if the petitioner had no direct interest in the petition.
The Court was divided on the question of whether petitions such as this justified revisiting the issue of the standing of petitioners who lack a direct interest.
Contracts (General Part) Law, 5733 – 1973 s. 33, s. 61.
On 9 March 2011, the Minister of Education announced that Advocate Shimon Mizrahi would be awarded the 2011 Israel Prize in the field of sports, upon the recommendation of the Israel Prize Judging Committee. The members of the Judging Committee were Tal Brody, an renowned basketball player who had played for the Maccabee Tel-Aviv basketball team, and who was awarded the Israel Prize in 1979, Gili Lustig, the head of the competitive sports section of the Israel Olympic Committee and a coach of the Israel All-Star volleyball team, and Esther Roth-Shachamorov, a celebrated athlete who had represented Israel at the 1976 Olympic Games, and who was awarded the Israel Prize in 1999. The Petitioners asked that the Court annul the decision, arguing that Brody had acted under a conflict of interests because Advocate Mizrahi had served for many years as the chairman of the Maccabee Tel Aviv basketball team, and he and Brody were professionally and socially acquainted.
In rejecting the petition, the Court held that the scope of Court’s intervention in decisions concerning the granting of the Israel Prize should be significantly limited, particularly in regard to claims regarding the worthiness of the recipients. Restraint should also be exercised in regard to claims addressing the award procedures.
Advocate Shimon Mizrahi created new management norms in the field of sports. His many years of continuing, voluntary activity led to heightened public awareness of basketball, while ensuring high level, quality management in Israeli sports that resulted in prestigious national and international achievements.
Advocate Mizrahi’s public activity in national and international forums has enhanced the image of Israeli sport in general, and the field of basketball in particular.
The petition before the Court, submitted on 23 March 2011, argues that Advocate Mizrahi’s award should be revoked.
The decision to award the prize to Advocate Mizrahi was adopted unanimously by the committee appointed in accordance with the Rules of the Israel Prize. The committee comprised three members: Tal Brody (hereinafter – Brody), who served as chairman of the committee, Gili Lustig and Esther Roth-Shachamorov. Brody was an outstanding basketball player for many years, and played for the Maccabee Tel Aviv team. He was awarded the 1979 Israel Prize for his special contribution to the state and to physical culture. Lustig is the head of the competitive sport section of the Israel Olympic Committee, and a volleyball coach who coached the Israel All-Star team. Roth-Shachamorov was an outstanding athlete who represented Israel at the Olympic Games in 1976. She was the winner of the 1999 Israel Prize in sport and physical culture. Advocate Mizrahi serves as the chairman of the Maccabee Tel Aviv basketball team.
On 10 March 2011, the day following the announcement that the prize would be awarded to Advocate Mizrahi, the representatives of the Petitioners requested that the Minister of Education rescind the decision to award the prize to Advocate Mizrahi. The request was denied. Therefore, as is has become the accepted practice over the past years, the Petitioners submitted the petition that is before the Court. The Petitioners’ main argument is that the decision is tainted by a conflict of interests and must be revoked in light of the alleged professional and social ties between Brody and Advocate Mizrahi arising from their joint activities in the Maccabee Tel Aviv basketball team. It should be noted that the petition does not question whether “Mr. Mizrahi is actually worthy or unworthy of the Israel Prize”. In their petition, the Petitioners note that they do not cast any personal aspersions upon Brody, and they have no doubt that he acted in good faith. On 6 April 2011, the Petitioners submitted a request to amend the petition (hereinafter – the amendment request). In the amendment request, the Petitioners seek to make a significant change in the petition, and to argue that the decision to grant the prize to Advocate Mizrahi is flawed on the merits, and not just due to a conflict of interests. This claim relies upon a number of past events that, according to the Petitioners, are related to Advocate Mizrahi. Thus they raise a matter from 1988 in regard to the issuing of free Maccabee Tel Aviv game tickets by Advocate Mizrahi. In the amendment request, they also raise new claims in regard to the Israel Prize Rules. Thus, they argue that the procedure for selecting the recipient of the Israel Prize is not properly transparent, and that no minutes of the meeting are recorded. On the day the amendment request was submitted, two additional requests were also submitted: One was a request to remove Petitioner 3, and the other was a request for the Yamit Association for Good Governance to join the petition. In a decision given that day, Justice A. Hayut ordered the removal of Petitioner 3, and that the amendment request and the request to cojoin a petitioner be decided by the panel that would hear the petition.
Under the circumstances, and in light of the intense interest of the petition and the responses in Advocate Mizrahi and Brody and their relationship, it would be appropriate that we say a few words about the Petitioners and the association that asked to conjoin. The three original Petitioners describe themselves in the petition as “fans of sport in general, and of basketball in particular”. The request to add an additional petitioner was supported by the affidavit of the chairman of the association, Nati Granai. In his response to the petition, Advocate Mizrahi claims that one of the two remaining, original petitioners is a fan of the Hapoel Jerusalem basketball team, and that the second is a business partner of one of the lawyers who signed the petition. As for Nati Granai, the response claims that he is a fan of the Hapoel Tel Aviv basketball team. We do not see any need to address the question of the team preferences of the Petitioners or the association requesting to cojoin. We would further note that we did not see fit to permit the amendment of the petition. The request does not show adequate reason why the new claims were not raised in the original petition. Moreover, the factual claims in the amendment request refer primarily to matters from the distant past. The request to cojoin adds nothing.
As noted, the primary claim raised in the petition is that Brody has a conflict of interest in regard to Advocate Mizrahi, and therefore it was improper that a committee that he chaired awarded the prize to Advocate Mizrahi, especially as it was Brody who suggested that the prize be awarded to Advocate Mizrahi. As noted, Brody played for Maccabee Tel Aviv for several years. Advocate Mizrahi has served as chairman of the team for decades, including during the years in which Brody played for the team. The Petitioners argue that the two enjoyed not only a professional relationship but also a social relationship that continues to this day. The petition further argues, inter alia, that Brody’s name appeared on the list of directors on the Maccabee Tel Aviv Internet site. The petition also relies upon various well-known media publications in regard to Brody’s and Advocate Mizrahi’s relationship. Advocate Mizrahi’s response states that Brody ceased to serve as a director of Maccabee Tel Aviv in 2007. However, according to the response, Brody is invited to board meetings. Advocate Mizrahi’s verified response also states that Brody is not “a personal friend” of Advocate Mizrahi, and that “there is no personal relationship between them beyond professional acquaintance and cooperation”. The response emphasizes that the two are not “close friends”.
The response of Respondents 1-2, which was very ably drafted by Advocate Dina Zilber of the State Attorney’s Office, argues that the Court’s involvement in decisions to grant prizes, including the Israel Prize, should be as limited as possible. It argues that decisions to award prizes concern matters of respect and prestige and therefore differs from other administrative decisions. Decisions to grant prizes enjoy very wide discretion that, by their nature, involve a subjective element. The Respondents therefore believe that the Court must exercise great restraint in this area. As for conflicts of interest, it is argued that if the Petitioners’ position is accepted, it will be extremely difficult to find judges to serve on the Israel Prize committees, inasmuch as it is but natural that the candidates for the prize will be well-known personalities with whom the judges are professionally acquainted. The Respondents therefore ask that the petition be denied, and of course, that was also Advocate Mizrahi’s request in his response.
The Israel Prize has been awarded annually by the state since 1953. The prize is awarded in the fields of Jewish studies, social sciences, humanities, exact sciences, culture, art, communications and sports. In addition to the prizes awarded to outstanding representatives of the above categories, a prize is also awarded for “lifetime achievement – special contribution to society and the state”. The prize is very prestigious, and the winner is also granted a sum of money by the state. The prize is awarded in a special ceremony on Independence Day, in the presence of the President, the Prime Minister, the Chief Justice and the Minister of Education. The legal basis for the prize is cited in the Israel Prize Rules. As of this year, a process has begun for the granting of the prize on the basis of new rules (upon the recommendation of a public committee). The prize is not awarded in all of the categories every year but in accordance with a certain cycle. The candidates for the prize must be Israeli citizens who resided in Israel during the three years prior to their candidacy (except in special cases). The prize is awarded to individuals and not to corporations. A person can receive the prize only once. According to the new rules, each member of a committee may nominate a candidate after receiving the list of candidates. The other judges on the committee do not know the identity of the nominating party, even when that person is a member of the committee.
The Israel Prize is a state prize intended to recognize people who have excelled in various fields and who have significantly contributed to human knowledge and to Israeli society. In addition to the recognition and honor of those members of society for their important achievements, it is hoped that honoring them will encourage others to excel in the various fields and contribute to society. The prize serves a uniting role on our special holiday. The unique character of the prize can be seen, inter alia, from the fact that is awarded on Independence Day. The prize ceremony has become an ongoing tradition over the decades. Therefore, its uniqueness and status should be assiduously protected. All members of society and, of course, the Court, must take care to avoid taking any action that might detract from its prestige.
In my opinion, the petition should be denied. According to my view, as shall be set forth below, the scope of Court’s intervention in decisions concerning the granting of the prize should be significantly limited. This is particularly so in regard to claims regarding the worthiness of the recipients, that is, in regard to the substantive aspect of the award. But significant restraint should also be exercised in regard to claims addressing the award procedures, i.e., the procedural aspect, especially in regard to claims of conflict of interest. This narrow approach is grounded on two considerations: First, we are concerned with a subject that is almost entirely non-justiciable. Second, the issue of standing should be reinstituted, if only partially, where the Israel Prize is concerned.
As noted, the Israel Prize is awarded in the fields of Jewish studies, social sciences, humanities, exact sciences, culture, art, communications and sports, as well as for “lifetime achievement”. Awarding the prize in each of these fields involves a significant subjective element. Awarding the prize is materially different than winning a sports competition like basketball of athletics. In sports, winning is decided by the result. Once the result is known, the winner is decided as a matter of course. That, of course, is not the case in awarding a prize in a fields like Jewish studies, social sciences or the humanities, as well as for “lifetime achievement”. The greater the subjective component of the decision, the narrower the scope of judicial review. In this regard, we might mention section 33 of the Contracts Law (General Part), 5733 – 1973.
When, under any contract, a mark, a grade, title, prize or the like is to be given according to a decision or evaluation by one of the parties or by a third party, that decision or evaluation will not be the subject of court proceedings.
Of course, in this matter we are not concerned with a contract but with unilateral rules adopted by the state. However, the rationale of the section is clear, and applicable even to prizes like the Israel Prize. The decision to award the Israel Prize is an administrative decision, in that it is made by the Minister of Education on the basis of a recommendation of the prize committee. Some might argue that as an administrative decision, it is subject to judicial review like every other administrative decision. I disagree. Due to the special nature of the prize, its subjective component, and the social and ceremonial aspects, the Court should exercise maximal restraint when faced with a petition intended to attack a decision by the prize committee and the Minister of Education (see the opinion of my colleague Justice H. Melcer in HCJ 2454/08 Legal Forum for the Land of Israel v. Minister of Education  (hereinafter – the Sternhell case)). It is but natural that in various areas of human endeavor there are different schools of thought or opposing scientific approaches. At times, large ideological gaps arise in the social sciences and the humanities. Similar phenomena are found in various fields of the arts. The Court must not intervene in such debates. Therefore an expansion of judicial review in the area of the Israel Prize must be prevented (see Daniel Friedman, “Justiciability of Decisions in regard to the Israel Prize,” 5 Hamishpat 181 (2001)). Moreover, and perhaps needless to say, the Court lacks the institutional skills to decide disputes in regard to the question of whether a candidate is indeed worthy of the prize that the committee has decided to grant. Indeed, judges lack even the personal skills for deciding whether a candidate is worthy of receiving the prize (except, perhaps, in the case of a prize in the field of law; and cf. HCJ 10455 Amir v. Israel Bar Association ).
This petition, and similar petitions submitted in the past in regard to the awarding of the Israel Prize, are characterized by a petitioner or petitioners who do not claim to be worthy of the prize, but rather seek to deny the prize to the person chosen by the judging committee and the Minister of Education. Some might say that it is simply an absence of firgun, while others may go so far as to say that petitioners who seek to strip others of the prize are driven by envy (for an exceptional case in which the petitioner complained that he was not awarded the Israel Prize, see HCJ 167/06 Weinrauch v. Minister of Education ). If the Petitioners are, indeed, rivals of Advocate Mizrahi in the field of sports, it would seem that they see his award as a red – or more precisely, a yellow – flag. In the distant past, this Court held that it would not recognize the standing of a person petitioning to deprive another of a benefit (see, HCJ 100/64 Mata’ei Emek Ha’arazim v. Jerusalem District Commissioner ; HCJ 19/64 Israel Insurance Agents Association v. Insurance Supervisor ). Indeed, since that holding, there has been a dramatic change in regard to standing, and the Court has effectively removed that requirement as a threshold for relief in a petition against an administrative decision. In my opinion, the present case demonstrates the need for reconsidering the matter in view of the socio-cultural price that society may pay for recurring petitions against Israel Prize recipients. The Court must refrain from unintentionally assisting legal proceedings that encourage a lack of firgun and schadenfreude. In my opinion, the Court would do well to adopt rules that would reduce the number of petitions intended to strip a person of a prize, and the Israel Prize in particular.
If one were to examine the development of justiciability and standing over the last decades, I believe that one would find a clear correlation between that development and the increase in the number of petitions challenging decisions to award the Israel Prize. Indeed, one might say that just as Independence Day arrives every year on 5 Iyyar, so a petition will be submitted to this Court every year after the Ministry of Education announces the awarding of the prize. It is in interesting to note that this “tradition” of petitions concerning the prize began in 1997, following this Court’s only intervention in a decision to award the prize (in HCJ 2205/97 Massala v. Minister of Education and Culture ). Since then, the following petitions have challenged the awarding of the prize to someone: HCJ 1933/98 Hendel v. Minister of Education and Sport ; HCJ 2348/00 National Religious Party Faction v. Minister of Education ; HCJ 2769/04 Yahalom v. Minister of Education and Sport ; the Sternhell case ; HCJ 3346/09 Legal Forum for the Land of Israel v. Minister of Education . In a petition of a different nature, the petitioner, who had been chosen to receive the prize for painting, challenged the rule requiring that he personally attend the ceremony in order to receive the prize (HCJ 3750/03 Gershuni v. Minister of Education . It would appear that what we are now witnessing was unforeseeable when the more flexible tests for non-justiciability and standing were instituted. One can also not ignore the additional costs of petitions such as these, even though they are denied. The person chosen to receive the prize by the prize committee finds himself having to defend himself as if he were a criminal defendant. He must, of course, be included as a respondent to the petition, and he must respond to the various allegations often made against him. The respondent may hire a lawyer to represent him in the proceedings. If he is required to pay legal fees, it is unlikely that he will be compensated for his expenses even if the petition is denied.
Those considerations are the basis for my position in regard to the need to significantly limit judicial review of decisions to award the Israel Prize.
We shall now address the traditional justification for rescinding the requirement of standing, according to which, even when a petitioner has no personal interest in the subject of the petition, the Court must intervene in flawed administrative decisions because of its duty to contribute to the rule of law and to ensuring that government agencies act lawfully. Therefore, it is argued, we must ignore the possible motives of the Petitioners in this case, and their lack of personal interest, and focus upon the alleged conflict of interest. As we may recall, this allegation concerns the claimed professional and social relationship between Brody and Advocate Mizrahi. There is no dispute as to the professional relationship. That relationship spanned many years, inasmuch as the former played for Maccabee Tel Aviv while the latter served as chairman of the team. It is also undisputed that the relationship continued after the conclusion of Brody’s career as a player. As for the social relationship, it would appear that the parties disagree. In any case, under the circumstances, and as I shall explain below, there was no flaw that would justify this Court’s intervention, and there is certainly no flaw sufficiently serious as to warrant rescinding the decision. It may have been preferable for Brody to refrain from nominating Advocate Mizrahi. Nevertheless, we should bear in mind that, at the end of the day, the committee’s vote was unanimous – including the two judges against whom no allegations are made – that the prize be awarded to Advocate Mizrahi.
The members of each judging committee must be people who are well acquainted with the particular field. If, for example, we are concerned with a prize in the field of Jewish studies, it is but natural that the members of the committee will be people from that field or related fields. In our small country, and not only in it, it is hard to imagine that those qualified to serve on the judging committee would not be acquainted with the candidates. If a member or members of the judging committee are not acquainted with the work of the candidate, one might argue that such a member is not qualified to serve on the committee. A similar issue arose before this Court in regard to the awarding of the 2009 Israel Prize for “Lifetime Achievement – Special Contribution to Society and the State” to the Israel Democracy Institute (HCJ 3346/09 ). The Court denied the petition even though there were some relationships among all of the members of the judging committee, as well as between the Minister of Education’s advisor on the Israel Prize and the Democracy Institute. Another case adjudicated before this Court concerned the awarding of the Israel Prize for Political Science to Professor Zeev Sternhell of the Hebrew University of Jerusalem. The chairman of the judging committee was Professor Shlomo Avineri of the Political Science Department of the Hebrew University. Conflict of interest was not argued in that case. Perhaps if we were we to accept the argument of the Petitioners in the instant case, we should also retroactively rescind that award (see the Sternhell case). If the Court were to adopt a broad approach to conflicts of interest, it might not be possible to find any person in Israel qualified to serve on an Israel Prize committee. Will we have to import judges from abroad for that purpose, as is occasionally done in regard to judges of sports matches?!
A broad approach in regard to conflicts of interest has an additional, clear disadvantage in that it might necessarily limit the pool of appropriate candidates for consideration by the judging committee. This would be the case as an acquaintance between a member of the committee and a potential candidate would result in the disqualification of the candidate, regardless of his achievements. Let us examine this in regard to the concrete case before us: If Brody is indeed disqualified from serving on a committee examining the candidacy of Advocate Mizrahi, the significance is that Advocate Mizrahi is disqualified as a candidate. The matter can be examined from another angle: Is it imaginable that this Court would entertain a petition by Advocate Mizrahi against the constitution of the committee because Brody is one of its members? Advocate Mizrahi could raise such a claim as a petitioner, saying that Brody’s appointment to the committee would bar his candidacy from consideration by the committee. It would see that it was the good fortune of several Nobel Prize winners that their awards did not have to pass the tests advanced by the Petitioners in this case and others dealing with the Israel Prize.
Although, in my view, the Court should adopt a restricted approach to judicial review of decisions in regard to the Israel Prize, clearly not all decisions in that regard can be said to be completely immune. For example – and hopefully one that will remain hypothetical – if financial corruption, such as bribery, were discovered in regard to the prize, the Court would certainly intervene even if the petitioner had no direct interest in the petition. We can also say that if a very serious flaw were found in the conduct of the judging committee or the Minister of Education, the Court would certainly address the petition. This approach is comparable to this Court’s approach in regard to ignoring a claim of laches raised by a respondent. As is well known, if a petitioner delays in submitting a petition to the High Court of Justice, the petition may be dismissed for that reason alone (in regard to Administrative Courts, see Regulation 33 of the Administrative Courts Regulations (Procedures), 5761 – 2000). Only a serious flaw in a decision or administrative proceeding will lead to a rejection of a claim of laches, particularly when the petitioner has no personal interest (see, HCJ 2285/93 Nahum v. Mayor of Petach Tikvah , at 642-643, per Y. Zamir, J.).
Another matter, though marginal, should nevertheless be mentioned. I am referring to the influence of petitions like the one before the Court upon other litigants who turn to the Court, but who must, at times, wait long periods for a hearing. The decision to award the Israel Prize to Advocate Mizrahi was published on 9 March 2011. The petition was submitted on 23 March 2011. The Israel Prizes will, by tradition, be awarded on Independence Day, which this year will be celebrated on 10 May 2011 (6 Iyyar). Of course, this petition must be decided before the date of the award. On 6 April 2011, the duty judge (my colleague Justice E. Hayut) decided that the petition would be heard by the Court no later than 27 April 201. The hearing was held on 11 April 2011. Petitions in regard to the Israel Prize in the past have also been heard shortly after their submission. As a result of the fact that petitions in regard to the prize, and petitions of similar character and urgency are meant to be heard soon after their submission, cases that have already been set for hearing must be delayed or the Court must set aside space in its calendar for urgent petitions. The clear result is that other litigants suffer, although their already pending cases may be more worthy of precedence on the merits.
We are concerned with a petition to rescind the decision to award the 2011 Israel Prize for sports to Advocate Mizrahi. As I have explained, in my view the Court should adopt a narrow approach in regard to prize decisions. A decision concerning who is to receive the prize need not be addressed by the Court on the merits, except in exceptional cases, such as corruption. A similar, though less strict approach should be adopted in regard to the election process and the decision procedure. We should bear on mind that even petitions that are ultimately denied may, by their sheer number, harm the prize and detract from its prestige. The Court should take care that it not unintentionally encourage a lack of firgun, or envy and schadenfreude. Independence Day is a holiday that unifies the nation, despite the differences and divisions of the rest of the year. The Israel Prize has become an important, traditional feature of the national holiday. It is to be hoped that awarding the prize will cease to be a focus of discord. In the field of sports, the contests should remain sporting, and the appropriate forum should be on the boards or the grass and not the Court.
The petition is denied. Petitioners 1-2 will pay the legal fees of Respondents 1-2 in the amount NIS 20,000, and the same amount to Advocate Mizrahi.
I concur with the judgment of my colleague, Justice A. Grunis, in denying the petition.
In his judgment, my colleague addressed the question of the scope of judicial review of decisions related to the Israel Prize. I agree that, as a rule, the Court should refrain from intervening in the decisions of the committee that decides upon awarding the prize, and that the committee enjoys broad discretion in this regard. In any case, these are not decisions that are meant to be the subject of legal proceedings (sec. 33 of the Contracts (General Part) Law, 5773 – 1973). I also agree that the Court should exercise great restraint in regard to intervening on the basis of claims against the selection process. However, as I have noted in the past, “…that is not to say that the decisions of the prize committee are immune to judicial review. The prize committee, like any administrative body, is subject to judicial review, but where the decision of the prize committee to award the Israel Prize to a certain person has been arrived at in good faith and on the basis of relevant professional considerations, there is no cause for the intervention of this Court in the decision (HCJ 2454/08 Legal Forum for the Land of Israel v. Minister of Education ).
However, and although I entirely agree with my colleague on the importance of preserving the Israel Prize as a uniting element on the State of Israel’s national holiday, as an expression of appreciation of a person’s contributions to the state and society, and as reinforcing the appreciation of excellence in Israeli society, I believe that we should show great restraint in limiting standing. Indeed, there are petitions against decisions to grant the prize to someone that are vexatious and seem to be brought out of envy rather than true desire that the prize be awarded only to those deserving it. Indeed, there are petitions in this regard that express a certain lack of understanding of the public nature of the prize, as it is not required that a prizewinner, his opinions and views necessarily represent the public consensus, as if anyone knows what that consensus might be and whether it is good and proper. But the Court’s open gates can also ensure that certain decisions that are appropriate for judicial review due to material flaws will be brought before the Court. My colleague indeed notes that there may be cases – and let us hope that we not witness such occurrences as financial corruption in regard to the prize – in which the Court will open its gates before a petitioner who has no direct interest in the petition. I believe that should surely be the case where there is no potential petitioner with a direct interest in the petition, and that even where there is a specific victim who did not petition the Court, there should remain an exception – not overly restricted – to the approach limiting access to public petitioners that would apply to matters of importance or significance that goes beyond the individual case (see, in this regard, the decision of Justice A. Procaccia in HCJ 651/03 Association for Civil Rights in Israel v. Chairman of the Elections Committee for the 16th Knesset . For these reasons, I would not set rules in stone in regard to the standing issue in the context under discussion. My assumption is that the Court will know how to identify – as it has until now – the exceptional cases that justify extending relief to a petitioner whose standing is unclear, which cases should be addressed even if it would appear that the petitioner lacks any direct interest, and which cases should be dismissed in limine for that reason.
In conclusion, we can only hope that, in the future, legal proceedings in these matters will become unnecessary, and that the Israel Prize will continue to be what it always has been – the highest accolade of the State of Israel for its finest researchers, scientists and contributors to our society.
In my opinion – as far as recommendations of the judging committee acting in accordance with the Israel Prize Rules are concerned, or the decisions of the Minister of Education to accept or reject those recommendations (to award or not award the prize) – the substantive decision in these matters should not be a subject for legal proceedings. This is what is required by the provisions of section 33 of the Contracts (General Part) Law, 5737 – 1973, which should, in my opinion, be applied to the matter in accordance with section 61 of that law.
The area concerning the status of a petitioner before the High Court of Justice who petitions to deny the right of another by reason of infringement of freedom of occupation, promoting competition, or preventing discrimination. This status was recognized in overruling the rule in HCJ 100/64 Mata’ei Emek Ha’arazim Ltd. v. Jerusalem District Commissioner . For a critical examination of the issue, see Amnon Rubinstein, “The Standing of a Petitioner before the High Court of Justice seeking to Deny a Third Party’s Right,” 27 HaPraklit 499 (1971). On the change in the rule, see: HCJ 287/91 Kargal v. Investments Center Administration  at 856-862; HCJ 849/92 Shemen Industries Ltd. v. Investments Center Administration  at 706-709; AAA 8193/02 Reuven v. Paz Oil Company Ltd. ; HCJ 4736/03 Alon Oil Company of Israel Ltd. v. Minister of Industry and Trade .
The area concerning the status of a public petitioner in constitutional petitions or petitions concerning infringement of the rule of law See: HCJ 910/86 Ressler v. Minister of Defense ; HCJ 651/03 Association for Civil Rights in Israel v. Chairman of the Elections Committee ; HCJ 962/07 Liran v. Attorney General . For criticism of the rule, see Dr. Shlomo Levin, “Is there Standing for Standing?” 39 Hapraklit 453 (1990-1991).
In my view, the fact that the Petitioners before us sought to deny the Israel Prize to Respondent 3 on the basis of arguments that they believed had some basis in public law does not justify limiting standing in the above two categories, or confusing them. In my opinion, assessing costs in this area of frivolous petitions should be sufficient for the time being to achieve the necessary balance among the relevant competing interests.
Sometimes it is appropriate “lefargen” (an expression borrowed from Yiddish, but that has no Hebrew equivalent, and perhaps for a reason).
It is about time that we leave the Israel Prize and its recipients alone.
Held as per the opinion of Justice A. Grunis.
 Translator’s note: The term firgun, used here and elsewhere in the decision, derives from the Yiddish farginen and is related to the German vergönnen. The term lacks a precise Hebrew or English equivalent. It expresses a sense or acknowledgement of joy or satisfaction at the success of another, and is thus the opposite of schadenfreude.
 Translator’s note: Yellow is Maccabee Tel Aviv’s team color.
 Translator’s note: Infinitive of “firgun”.

matches: v. v. v. v. v. v. v. v. v. v. v. v. v. v. v. v. v. v. v. v. v. v.


COPYRIGHT MATERIAL OMITTED Daniel J. Lueders, Woodard, Emhardt, Moriarty, McNett & Henry LLP, of Indianapolis, Indiana, argued for plaintiff-cross appellant, Cook Biotech Incorporated. With him on the brief was Holiday W. Banta.
William P. Kealey, Stuart & Branigin LLP, of Lafayette, Indiana, argued for plaintiff-cross appellant, Purdue Research Foundation.
J. Alan Galbraith, Williams & Connolly LLP, of Washington, DC, argued for defendants-appellants. With him on the brief were Thomas H.L. Selby, Shruti Rana, and Jessamyn S. Berniker.
Before NEWMAN, LOURIE, and PROST, Circuit Judges.
Defendant-appellants, ACell, Inc. ("ACell"), Stephen F. Badylak, and Alan R. Spievack appeal the decision of the United States District Court for the Northern District of Indiana denying ACell's post-trial motions pertaining to claim construction, infringement, and the adequacy of the jury verdict form following the jury's finding that ACell's commercial product, ACell VetTM, infringed U.S. Patent No. 5,554,389 (the "'389 patent") owned by Purdue Research Foundation and that Drs. Badylak and Spievack willfully induced ACell to infringe. Cook Biotech Inc. v. ACell, Inc., No. 4:03-CV-0046 AS, 2005 WL 2136107 (N.D. Ind. Aug.17, 2005) ("Post-Trial Order"). Plaintiffs-appellees, Cook Biotech Inc. and Purdue Research Foundation (respectively, "Cook" and "PRF"; collectively, "appellees" or "cross-appellants"), cross-appeal the district court's grant of summary judgment with respect to inventorship and the district court's denial of their post-trial motions pertaining to willful infringement and whether any relief should have been awarded following the jury's finding of infringement. Because the district court erred in its claim construction which formed the basis for the jury's finding of infringement and because, under the correct construction, there is no material factual dispute that the ACell VetTM product cannot infringe claims 1, 7, and 8 of the '389 patent literally or under the doctrine of equivalents, the judgment of infringement is reversed. As a result, the issues raised in Cook's cross-appeal pertaining to its willful infringement case and its requests for relief following the jury verdict in its favor are rendered moot. Finally, because the district court did not err in determining on summary judgment that (1) Dr. Badylak is not a co-inventor of U.S. Patent No. 6,576,265 (the "'265 patent"), (2) Dr. Spievack is an inventor of the '265 patent, and (3) PRF's unjust enrichment claim must fail, we affirm the district court's rulings with respect to those issues as raised in PRF's cross-appeal.
Dr. Badylak was employed by Purdue University from 1977 until October 6, 2002. In the mid-1980s, Dr. Badylak and others in his laboratory at Purdue University discovered that certain tissue compositions could be used as scaffolds for tissue reconstruction. As advancements were made using these tissue compositions, now known as extracellular matrices or ECMs, the tissues came to be categorized according to the source of the tissue, e.g., small intestinal submucosa ("SIS"), stomach submucosa, liver basement membrane, urinary bladder submucosa ("UBS"), and urinary bladder matrix ("UBM"). The two organ tissue sources relevant to this case are UBS and UBM.
1. A composition comprising urinary bladder submucosa delaminated from both the abluminal muscle layers and at least the luminal portion of the tunica mucosa of a segment of a urinary bladder of a warm blooded vertebrate.
'389 patent, col. 5, ll. 20-23 (emphasis added).
The '389 patent names four inventors, one of whom is Dr. Badylak. Pursuant to his employment contract, Dr. Badylak assigned the '389 patent and the rights to other patents on inventions he had developed to PRF. On February 9, 2003, PRF granted Cook an exclusive license with respect to many of its patents in this field of tissue engineering, including the '389 patent for all non-orthopedic and non-cardiac applications.
Dr. Spievack, a Harvard University professor and surgeon, developed an interest in the regenerative capabilities of the epithelial basement membrane during his studies as a Fulbright scholar in the 1950s. In early 1996, Dr. Spievack first met Dr. Badylak at a conference during a presentation given by Dr. Badylak pertaining to SIS.
According to Dr. Spievack, in March 1996, he tested techniques for removing various tissue layers of the bladder wall and in July of that year, he successfully treated poison ivy on one of his legs with a bladder basement membrane composition. Dr. Spievack testified that between February and October 1996, he did not discuss the results of his basement membrane tests with Dr. Badylak, but from the end of 1996 through the end of 1999, he visited Dr. Badylak at Purdue University and discussed his work on graft compositions.
Beginning in 1998, Dr. Spievack sought to obtain a license from PRF for non-SIS products. When PRF ultimately turned him down, Dr. Spievack continued to work on what he considers to be his own UBM technology. In 1999, Dr. Spievack formed ACell, Inc. to research and develop extra-cellular matrix technology. On December 22 of that year, Dr. Spievack filed a provisional application on a UBM composition, which led to the issuance of two patents naming him as the sole inventor, the '265 patent and U.S. Patent No. 6,579,538 (the "'538 patent"). The term UBM first appeared in the '265 patent, which issued on June 10, 2003. UBM refers to a matrix of tissues including the basement membrane and tunica propria of the urinary bladder of a mammal. The '265 patent discloses and claims, inter alia, a tissue graft composition including the epithelial basement membrane.
The accused product, ACell VetTM, is sold by ACell in three forms: hydrated, lyophilized, and powdered. Since the issuance of the '265 patent, ACell has represented that its product includes the epithelial basement membrane as disclosed and claimed in the '265 patent.
Cook and PRF sued ACell for, inter alia, patent infringement of claims 1, 7, and 8 of the '389 patent, correction of inventorship for a number of issued patents2 (collectively, the "Disputed Patents"), and common law unjust enrichment for the research and inventions disclosed in the Disputed Patents. On September 4, 2003, appellees moved for a preliminary injunction, seeking to enjoin the sale of ACell VetTM. The district court denied the motion based on the record before it, preliminarily finding that claim 1 of the '389 patent "does not ... extend beyond an essentially submucosa composition," and emphasized that its findings were based on a preliminary record and were not intended to be a Markman ruling on claim construction. Cook Biotech Inc. v. ACell, Inc., No. 4:03-CV-0046 AS, slip op. at 10 (N.D. Ind. Dec.22, 2003).
After conducting a Markman hearing, during which the district court solicited the parties' proposed constructions in the form of jury instructions, the district court adopted appellees' proposed instructions. See Cook Biotech Inc. v. ACell, Inc., No. 4:03-CV-0046 AS (N.D. Ind. Oct.25, 2004) ("Markman Order"). Of particular relevance, the district court rejected ACell's proposed construction for "urinary bladder submucosa" and "at least the luminal portion of the tunica mucosa" and adopted appellees' proposed construction of the phrase "at least the luminal portion of the tunica mucosa." The district court rejected ACell's proposed construction of "urinary bladder submucosa" because it believed that the invention disclosed in the '389 patent was broad enough to include compositions that contained tissues other than submucosa. Id., slip op. at 9-10. Further, because the district court believed that ACell's proposed construction of "urinary bladder submucosa" would rewrite the claims (i.e., change an open transition, comprising, into a closed transition, consisting essentially of), it was unwilling to accept that construction. The district court was also convinced by the evidence presented at the hearing and the ordinary meaning of the tunica mucosa that "the luminal portion of the tunica mucosa" refers only to the epithelial cells. Id., slip op. at 10-11.
[t]hat it is more likely than not that ... [ACell's] product includes any amount of submucosa. In making this determination you should keep in mind that submucosa, as I have defined it, does not require any particular amount of submucosa, and that the presence of any submucosa in the ACell product requires a finding of infringement.
In response, the jury returned a verdict finding that ACell infringed claims 1, 7, and 8 of the '389 patent, but found that the infringement was not willful.
With respect to damages, on the first day of trial, the district court granted ACell's motion in limine seeking to preclude appellees from presenting lost profits damages to the jury because the district court found that appellees failed to establish an "appropriate record" with respect to damages sufficient to raise a jury issue. That ruling effectively precluded appellees from obtaining damages because they had sought only lost profits damages, and not a reasonable royalty. Thus, even though the jury returned a verdict in their favor, appellees were not awarded any damages.
Following the judgment, both parties filed post-trial motions. ACell moved the district court to amend the judgment after this court issued its opinion in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). ACell contended that this court's decision in Phillips made it clear that ACell's proposed claim constructions were correct and that a product that did not remove the lamina propria, basement membrane, and epithelial cells could not infringe the '389 patent. Appellees filed post-trial motions for lost profits damages, willfulness as a matter of law, and attorney fees. While the district court denied the parties' motions, it also stayed enforcement of a permanent injunction because it found that this court's decision in Phillips "raises enough doubt at this point under these under [sic] the totality of the circumstances of this case to cause this court to stay its hand and grant the stay of enforcing a permanent injunction pending the appeal in this case." Post-Trial Order, slip op. at 3.
The district court also considered several motions for summary judgment relating to inventorship issues filed by appellees and ACell. Specifically, appellees sought to establish on summary judgment that Dr. Badylak is a joint inventor of the '265 patent. Appellees alleged that Dr. Badylak collaborated with Dr. Spievack in developing the urinary bladder as a tissue graft composition as claimed in the '265 patent, and that because Dr. Badylak is under an obligation to assign the inventions he made while at Purdue to PRF, PRF is a rightful owner of the '265 patent. ACell filed its own summary judgment motion on Count IV ("unjust enrichment") of PRF's complaint and a partial summary judgment motion on Counterclaim Counts I ("rights to technology") and II ("inventorship").
The district court first noted that appellees had failed to assert that Dr. Badylak is the sole inventor of the '265 patent in their complaint, their interrogatory responses, and the Pretrial Order. Instead, the district court found that appellees' assertions were limited to "omitted" inventors. Thus, the district court precluded appellees from asserting that Dr. Badylak was the sole inventor or that Dr. Spievack was not a proper inventor of the '265 patent because of those failures.
Second, the district court found that appellees had failed to present clear and convincing evidence that Dr. Badylak contributed in some significant manner to the conception of the invention claimed in the '265 patent. In reaching that conclusion, the district court began its analysis with the presumption that the named inventors on a patent are correct, and also found that: (1) Dr. Badylak had filed papers under oath with the PTO in which he denied inventorship of the '265 patent; (2) the evidence demonstrated that Dr. Spievack conceived and reduced to practice the invention claimed in the '265 patent; (3) Dr. Spievack had completed the invention claimed in the '265 patent by the summer of 1996 when he successfully treated his poison ivy with it; and (4) any discussions between Drs. Badylak and Spievack after the summer of 1996 were irrelevant to the issue of inventorship because Dr. Spievack conceived the '265 patented invention by that summer.
Finally, the district court found that the deposition excerpts cited by appellees, in support of their assertion that Dr. Spievack discussed the use of the basement membrane as a tissue graft material with Dr. Badylak at the 1996 conference, "fail [ed] to show that [Dr.] Badylak contributed anything to [Dr.] Spievak's [sic] conception of the invention, let alone that [Dr.] Badylak contributed `in some significant manner'" as required by our holding in BJ Services Co. v. Halliburton Energy Services, Inc., 338 F.3d 1368, 1373 (Fed. Cir. 2003). Cook Biotech Inc. v. ACell, Inc., No. 4:03-CV-0046 AS, slip op. at 9 (N.D. Ind. June 22, 2003) ("Inventorship Order"). Because the district court found that appellees' evidence failed to meet the clear and convincing evidence standard to correct inventorship, it denied appellees' motion for summary judgment that Dr. Badylak was a co-inventor of the '265 patent.
In considering ACell's partial summary judgment motion on Counterclaim Counts I ("rights to technology") and II ("inventorship"), the district court noted that it interpreted ACell's motion as a request for a declaration to the effect that Dr. Spievack is an inventor of the '265 patent. Relying on its previous determinations with respect to inventorship, the district court granted ACell's motion for a declaration that Dr. Spievack is an inventor of the '265 patent. See infra Part II.B.4.
With respect to ACell's motion for summary judgment on appellees' Counterclaim Count IV ("unjust enrichment") under Indiana law, the district court found that because the rights of the parties were controlled by an express contract, recovery could not be based upon a theory implied in law, e.g., unjust enrichment. Additionally, the district court found that appellees' chosen remedy, assuming they could prove unjust enrichment, of a constructive trust was not available because they failed to assert either actual or constructive fraud in their complaint.
ACell appeals the district court's construction of "urinary bladder submucosa" and "at least the luminal portion of the tunica mucosa," the jury's findings of infringement of claims 1, 7, and 8 of the '389 patent, and the adequacy of the verdict form. Cook cross-appeals several rulings by the district court with respect to its willfulness case and the district court's decision to stay an award of a permanent injunction until after appeal to this court. PRF cross-appeals several of the district court's rulings pertaining to inventorship and its dismissal of PRF's unjust enrichment claim. We have jurisdiction pursuant to 28 U.S.C. § 1295(a) (1).
We review a district court's grant of summary judgment de novo, reapplying the standard applicable at the district court. Rodime PLC v. Seagate Tech., Inc., 174 F.3d 1294, 1301 (Fed. Cir. 1999). Summary judgment is appropriate when it has been shown "that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law." Fed. R. Civ. P. 56(c); Scaife v. Cook County, 446 F.3d 735, 739 (7th Cir. 2006).
We review the district court's denial of a motion for JMOL de novo. Harris Corp. v. Ericsson Inc., 417 F.3d 1241, 1248 (Fed. Cir. 2005). A court may grant JMOL on an issue when "there is no legally sufficient evidentiary basis for a reasonable jury to find for [the nonmoving] party on that issue...." Fed. R. Civ. P. 50(a) (1).
Determining infringement generally requires two steps. "First, the claim must be properly construed to determine its scope and meaning. Second, the claim as properly construed must be compared to the accused device or process." Carroll Touch, Inc. v. Electro Mech. Sys., Inc., 15 F.3d 1573, 1576 (Fed. Cir. 1993).
Claim construction is an issue of law that we review de novo. Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1456 (Fed. Cir. 1998) (en banc); Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc), aff'd, 517 U.S. 370, 116 S. Ct. 1384, 134 L. Ed. 2d 577 (1996). "When interpreting claims, we inquire into how a person of ordinary skill in the art would have understood [the] claim terms at the time of the invention." Pfizer, Inc. v. Teva Pharms. USA, Inc., 429 F.3d 1364, 1372-73 (Fed. Cir. 2005) (citing Phillips, 415 F.3d at 1313). "The inquiry into how a person of ordinary skill in the art understands a claim term provides an objective baseline from which to begin claim interpretation." Id. "Importantly, the person of ordinary skill in the art is deemed to read the claim term not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification." Id. " [O]ur cases recognize that the specification may reveal a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess. In such cases, the inventor's lexicography governs." Phillips, 415 F.3d at 1316.
Infringement, whether literal or under the doctrine of equivalents, is a question of fact. Bai v. L & L Wings, Inc., 160 F.3d 1350, 1353 (Fed. Cir. 1998). The proper inquiry is whether the evidence is such that a reasonable jury could return a verdict for the non-movant. See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 252, 106 S. Ct. 2505, 91 L. Ed. 2d 202 (1986). We must draw all justifiable inferences in favor of the non-movant. Id. When a district court's determination of infringement is premised on an erroneously construed claim, however, that determination is not entitled to deference. Playtex Prods., Inc. v. Procter & Gamble Co., 400 F.3d 901, 906 (Fed. Cir. 2005) (citing Elkay Mfg. Co. v. Ebco Mfg. Co., 192 F.3d 973, 976 (Fed. Cir. 1999)).
Evidentiary rulings are generally not unique to patent law and therefore we review them under the law of the regional circuit. Advanced Cardiovascular Sys., Inc. v. Medtronic, Inc., 265 F.3d 1294, 1308 (Fed. Cir. 2001). The Seventh Circuit reviews a district court's evidentiary rulings for an abuse of discretion. Wollenburg v. Comtech Mfg. Co., 201 F.3d 973, 977 (7th Cir. 2000) (citations omitted).
Generally, inventorship is a question of law that is reviewed de novo, subject to review of underlying factual findings for clear error. Univ. of Colo. Found., Inc. v. Am. Cyanamid Co., 342 F.3d 1298, 1308-09 (Fed. Cir. 2003). However, where the inventorship issues were resolved on summary judgment, "such factual inferences as are material to the grant [of summary judgment] are not reviewed under the clearly erroneous standard, as if they were findings of fact made following a trial of issues [,]" Lemelson v. TRW, Inc., 760 F.2d 1254, 1260 (Fed. Cir. 1985), but rather are reviewed de novo, reapplying the standard applicable at the district court, see Rodime PLC, 174 F.3d at 1301 (Fed. Cir. 1999). " [T]o be a joint inventor, an individual must make a contribution to the conception of the claimed invention that is not insignificant in quality," and the inventors must "have some open line of communication during or in temporal proximity to their inventive efforts...." Eli Lilly & Co. v. Aradigm, 376 F.3d 1352, 1358-59 (Fed. Cir. 2004).
Assignment of ownership is governed by state law doctrines. Univ. of Colo., 342 F.3d at 1308.
ACell asserts that the district court erred in construing the term "urinary bladder submucosa" in claims 1, 7, and 8 of the '389 patent. ACell asserts that the PTO did not grant the '389 patent inventors a patent to the naturally occurring submucosa layer of a urinary bladder, but rather that it granted them a patent covering a tissue graft composition derived from that layer. ACell argues that the '389 specification makes clear that "urinary bladder submucosa" is a defined term which was defined to expressly exclude other urinary bladder tissue layers, specifically the abluminal muscle cell layers and at least the luminal portion of the tunica mucosa layer.
Cook argues that the '389 patent specification, specifically in the "DETAILED DESCRIPTION OF THE INVENTION" section, teaches that the term "urinary bladder submucosa" is broader than ACell's proposed construction because it states that the resulting composition "typically" consists essentially of urinary bladder submucosa. Cook thus asserts that the use of "typically" implies that there is another possible embodiment of the claimed composition that merely comprises urinary bladder submucosa, but may also include other tissues.
The tissue graft of composition in accordance with the present invention comprises urinary bladder submucosa of a warm-blooded vertebrate delaminated from adjacent bladder tissue layers. The present tissue graft composition thus comprises the bladder submucosa delaminated from abluminal muscle cell layers and at least the luminal portion of the mucosal layer of a segment of urinary bladder of a warm-blooded vertebrate. Typically the delamination technique described below provides a tissue composition consisting essentially of urinary bladder submucosa. These compositions are referred to herein generically as urinary bladder submucosa (UBS).
Id. at col. 2, ll. 1-4 (emphases added).
b. "the luminal portion of the tunica mucosa"
ACell argues that the district court erred in construing the term "the luminal portion of the tunica mucosa." ACell asserts that this term was defined by the patentee through the '389 patent's incorporation by reference of the procedure for preparing intestinal submucosa as detailed in U.S. Patent No. 4,902,508 (the "'508 patent"). According to ACell, the '508 patent specification defines "the luminal portion of the tunica mucosa" as "layer G" which includes the lamina epithelialis mucosa (or the epithelium layer) and its lamina propria. Thus, ACell asserts that the term "the luminal portion of the tunica mucosa" in the '389 patent should be given the same meaning, i.e., the epithelium layer and the tunica propria5 layer.
Appellees argue in response that the phrase "at least the luminal portion of the tunica mucosa" does not require a special definition and accuse ACell of "fishing" for a special definition. Further, appellees assert that there is no basis for importing a definition, even assuming the term is defined as ACell alleges, of the term from the '508 patent into the '389 patent because the '508 patent is directed to SIS whereas the '389 patent is directed to UBS. Appellees assert that the district court's construction of the term as "the epithelial cells" should be affirmed.
The preparation of UBS from a segment of urinary bladder is similar to the procedure for preparing intestinal submucosa detailed in U.S. Patent No. 4,902,508, the disclosure of which is expressly incorporated herein by reference. A segment of urinary bladder tissue is first subjected to abrasion using a longitudinal wiping motion to remove both the outer layers (particularly the abluminal smooth muscle layers) and the luminal portions of the tunica mucosa layers— the epithelial layers). The resulting submucosa tissue has a thickness of about 80 micrometers, and consists primarily (greater than 98%) of a cellular, eosinophilic staining (H & E stain) extracellular matrix material.
Id. at col. 2, ll. 17-28 (emphasis added). That paragraph makes clear that "the luminal portions of the tunica mucosa layers"6 were defined by the patentee as the "epithelial layers" and that "the procedure for preparing intestinal submucosa" as detailed in the '508 patent is expressly incorporated by reference into the '389 patent specification.
The term "epithelial layers" may arguably be subject to two interpretations. On the one hand, it refers to "layers" which appears to reflect that it was meant to encompass more than just the transitional epithelium layer, i.e., the transitional epithelium layer and the tunica propria layer, the only other layer that the '389 patent teaches is part of the tunica mucosa. See id. at col. 1, ll. 51-52. On the other hand, as recognized by the district court, the epithelium in the urinary bladder is made up of multiple layers of epithelial cells. Markman Order, slip op. at 10. Even accepting that the disclosure in the '389 patent specification itself is less than clear as to which interpretation is correct, the second important disclosure of the '389 specification is dispositive. As noted, the '389 patent specification expressly incorporates by reference the procedure for preparing intestinal submucosa from the '508 patent.
"Incorporation by reference provides a method for integrating material from various documents into a host document ... by citing such material in a manner that makes clear that the material is effectively part of the host document as if it were explicitly contained therein." Advanced Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1282 (Fed. Cir. 2000) (citations omitted). "To incorporate material by reference, the host document must identify with detailed particularity what specific material it incorporates and clearly indicate where that material is found in the various documents." Id. (citations omitted). Whether and to what extent material has been incorporated by reference into a host document is a question of law. Id.
Layers E, F, and G collectively represent the so-called tunica mucosa. Layer E is a layer of smooth muscle cells known as the lamina muscularis mucosa. Layer F, the stratum compactum, consists of acellular collagen and elastin fibers. Layer G consists of the lamina epithelialis mucosa and its lamina propria, which together and arranged in villous processes, a series of finger-like outgrowths of the mucous membrane.
The tissue graft material of this invention is prepared by abrading intestinal tissue to remove the outer layers including both the tunica serosa and the tunica muscularis (layers B and C in FIG. 1) and the inner layers including at least the luminal portion (layer G) of the tunica mucosa (layers E through G in FIG. 1).
As this disclosure makes clear: (1) "the luminal portion of the tunica mucosa" is represented by "layer G" in Figure 1 of the '508 patent, and (2) layer G in that figure corresponds to the lamina epithelialis mucosa and its lamina propria. Id. Even acknowledging appellees' argument that the layers of the wall of the intestine are somewhat structurally different than the layers of the wall of the bladder, neither party disputes that the basement membrane of the transitional epithelium is located between the epithelialis mucosa layer and its lamina propria layer in both organs. Thus, because the basement membrane is located between the two tissue layers explicitly identified, "the luminal portion of the tunica mucosa" must also refer to the basement membrane. Therefore, "the luminal portion of the tunica mucosa" means the lamina epithelialis mucosa (or transitional epithelium layer), the basement membrane, and the lamina propria.
The '389 patent's incorporation by reference of the '508 patent's procedure for preparing intestinal submucosa, in combination with the '508 patent's disclosure pertaining to which tissue layers are removed by that procedure, leads to the conclusion that the patentee's definition of the claim term as reflected in the '389 patent as the epithelial layers and in the '508 patent as the lamina epithelialis mucosa and its lamina propria was intended to refer to the same structures, i.e., the lamina epithelialis mucosa (or transitional epithelium layer), the basement membrane, and the lamina propria.
The district court's reasoning is contradicted by its own analysis. Relying on a medical dictionary, the district court recognized that the tunica mucosa comprises the epithelium, basement membrane, lamina propria mucosae, and lamina muscularis mucosae. Markman Order, slip op. at 10-11. The court then rejected ACell's proposed construction that "the luminal portion of the tunica musoca" means the epithelial cells (i.e., the transitional epithelium), the basement membrane, and the lamina propria because the term "would not require the entire tunica mucosa including the basement membrane, tunica propria and all epithelial cells to be removed as ACell contends." Id., slip op. at 11.
That statement by the district court reflects that it believed ACell's proposed construction of that term encompassed the entire tunica mucosa, rather than just "the luminal portion" as the claim requires. The district court's reasoning, however, overlooks the fact that ACell's construction permits the retention of the lamina muscularis mucosae layer of the tunica mucosa. This construction is consistent with both the medical dictionary's list of layers that comprise the tunica mucosa, and the teachings of the '508 patent, which specifically refer to that layer as "layer E" of the tunica mucosa. '508 patent, col. 3, ll. 14-15. As this discussion indicates, ACell's proposed construction does not require removal of the entire tunica mucosa as the district court's opinion suggests, but rather removal of only a portion of the tunica mucosa.7 Therefore, we construe "the luminal portion of the tunica mucosa" to mean "the lamina epithelialis mucosa (or transitional epithelium layer), the basement membrane, and the lamina propria."
ACell asserts that if we agree that the district court erred in its claim construction, a new trial is not necessary and we should reverse the judgment of literal infringement. It submits that its ACell VetTM product cannot infringe claims 1, 7, and 8 of the '389 patent because those claims require that the urinary bladder submucosa in the claimed compositions be delaminated from "the luminal portion of the tunica mucosa," and its product is not so delaminated. Rather, ACell's product retains part of "the luminal portion of the tunica mucosa" of a segment of a urinary bladder, i.e., the basement membrane and the lamina propria. Thus, ACell argues that because "the luminal portion of the tunica mucosa" is not delaminated as required by those claims, its product cannot infringe the asserted claims. Appellees agree with ACell that if we were to interpret any of the claims to exclude lamina propria, the ACell VetTM product cannot literally infringe the asserted claims.
We agree with the parties that the ACell VetTM product cannot, as a matter of law, literally infringe claims 1, 7, and 8 of the '389 patent because it contains the basement membrane and the lamina propria, tissue layers that are expressly excluded by the terms "urinary bladder submucosa" and "the luminal portion of the tunica mucosa" as the patentees have so defined them, and as we have thus construed them.
Appellees assert, however, that even if summary judgment of non-infringement is appropriate with respect to literal infringement, a new trial may be necessary on the question of infringement under the doctrine of equivalents. They argue that the evidence supports the theory that compositions that include lamina propria and submucosa are equivalent to compositions that consist essentially of submucosa because the two compositions perform the same function, in the same way, to achieve the same result.
ACell makes two arguments in response. First, it asserts that appellees did not preserve any argument under the doctrine of equivalents because they failed to assert any such theories of equivalents in the detailed portion of the pretrial order relating to infringement. Second, ACell argues that the "all limitations rule" bars the capture, under the doctrine of equivalents, of elements specifically excluded by a claim limitation. Because claims 1, 7, and 8 claim a composition comprising urinary bladder submucosa, and such submucosa must have been delaminated from "the luminal portion of the tunica mucosa," an accused product that contains some or all of "the luminal portion of the tunica mucosa" cannot infringe under the doctrine of equivalents.
Assuming that appellees could overcome their failure to preserve an issue with respect to infringement under the doctrine of equivalents, we conclude that applying appellees' theory of equivalence with respect to asserted claims would violate "a corollary to the `all limitations rule [,]' ... that `the concept of equivalency cannot embrace a structure that is specifically excluded from the scope of the claims.'" Athletic Alternatives v. Prince Mfg., 73 F.3d 1573, 1582 (Fed. Cir. 1996) (quoting Dolly, Inc. v. Spalding & Evenflo Cos., Inc., 16 F.3d 394, 400 (Fed. Cir. 1994)). The ACell VetTM product consists of basement membrane and tunica propria, two tissue layers specifically excluded from the claimed composition by delaminating "the luminal portion of the tunica mucosa." See supra Part II.B.1.b. A claim that specifically excludes an element cannot through a theory of equivalence be used to capture a composition that contains that expressly excluded element without violating the "all limitations rule." Permitting appellees to assert such a theory of equivalence would effectively remove the requirement that the urinary bladder submucosa be delaminated from "the luminal portion of the tunica mucosa." Thus, there is "no ... material issue for the jury to resolve," see Warner-Jenkinson Co., Inc. v. Hilton Davis Chem. Co., 520 U.S. 17, 39 n. 8, 117 S. Ct. 1040, 137 L. Ed. 2d 146 (1997), and a judgment of non-infringement under the doctrine of equivalents with respect to the asserted claims of the '389 patent is appropriate.
In addition, because we have concluded that there was no direct act of infringement, the finding that Drs. Badylak and Spievack willfully induced ACell to infringe must also be reversed. Lastly, because we have concluded that ACell does not infringe claims 1, 7, and 8 of the '389 patent as a matter of law, the other issues raised by ACell with respect to the jury instructions and verdict form are rendered moot.
Because we have concluded that no genuine issue of material fact remains with respect to whether ACell infringes claims 1, 7, and 8 of the '389 patent, Cook's cross-appeal pertaining to the district court's refusal to award a permanent injunction, and the district court's rulings with respect to its willful infringement case, including its challenge to several evidentiary rulings by the district court,8 the jury instructions, and the verdict form, are rendered moot.
In its cross-appeal, PRF raises two issues with respect to the district court's determination of inventorship and also challenges the district court's dismissal of its unjust enrichment claim. With respect to inventorship, PRF asserts that the district court erred by summarily determining that Dr. Badylak is not an inventor of the Disputed Patents and that Dr. Spievack is the sole inventor of the Disputed Patents.9 PRF essentially asserts that the district court erred because the documentary evidence showed that Dr. Badylak worked on a graft composition that included the basement membrane as early as 1994 and that Dr. Badylak collaborated with Dr. Spievack before the priority date of the Disputed Patents. Specifically, PRF argues that the district court focused on the wrong time period, i.e., between 1994 and 1996, the date Dr. Spievack allegedly conceived, and reduced to practice, the invention claimed in the '265 patent, rather than the period from 1994 through December 22, 1999, the date Dr. Spievack filed the provision application which led to the '265 patent. The premise of PRF's argument is that the district court erred in acting as though Dr. Spievack had established that he was entitled to a priority date earlier than the December 22, 1999 date on which the application leading to the '265 patent was filed. While Dr. Spievack testified that he had completed his invention by the summer of 1996, PRF asserts that the only other evidence offered as corroboration of Dr. Spievack's alleged completion was Dr. Spievack's unwitnessed laboratory notebooks. PRF asserts that under our precedent, unwitnessed notebooks are legally insufficient corroboration and that therefore there is a genuine issue of material fact as to whether Dr. Badylak communicated his work associated with basement membranes, described in the 1994 Disclosure,10 to Dr. Spievack between 1994 and December 22, 1999.
ACell responds to PRF's appeal with several factual assertions: (1) there is no evidence that Dr. Badylak communicated a contribution to Dr. Spievack's invention during the relevant time period, (2) PRF admitted under oath that Dr. Spievack is an inventor of the '265 patent, (3) the 1994 Disclosure does not reveal a basement membrane composition, and (4) Dr. Badylak disavowed any role in the conception of the invention claimed in the '265 patent in his testimony and in a letter he sent to the PTO.
We agree with the district court that Dr. Spievack is an inventor of the '265 patent and that PRF has failed to raise a genuine issue of material fact that survives summary judgment on the issue of whether Dr. Badylak is a joint inventor. Even if we were to accept that the district court may have focused on a more narrow time period, we agree with the district court that PRF has failed to point to evidence sufficient to create a genuine issue of material fact that Dr. Badylak "contributed in some significant manner" to the conception of the invention claimed in the '265 patent. See BJ Servs., 338 F.3d at 1373.
First, we do not read PRF's brief as challenging the district court's determination that Dr. Spievack is an inventor of the '265 patent. In fact, PRF admitted as much when it represented that Dr. Spievack was a co-inventor in an application it submitted to the PTO to provoke an interference with the '265 patent.
Second, the only record evidence argued by PRF to create a genuine issue of material fact is the 1994 Disclosure and Dr. Spievack's testimony in which he stated that " [Dr. Badylak] and I had talked about the basement membrane stuff somewhere along in '97 and '98, because I know at some point I had told him about my — the studies I had done in Boston with the dog bladders that we were talking about." (Spievack Dep. 38:4-7, Aug. 24, 2004.) Dr. Spievack's testimony, however, is not sufficient to create a genuine issue of material fact as to whether Dr. Badylak contributed "to the conception of the claimed invention that is not insignificant in quality" by sharing his knowledge of graft compositions, some of which is reflected in the 1994 Disclosure. See Eli Lilly & Co. v. Aradigm, 376 F.3d 1352, 1358-59 (Fed. Cir. 2004). This is especially so in light of Dr. Badylak's disavowal of having conceived of, reduced to practice, or recognized the importance of a basement membrane graft composition. The district court also correctly recognized that even accepting Dr. Spievack's testimony as true, because of the other deficiencies noted, it was insufficient to overcome the presumption that the named inventors on an issued patent are presumed to be the actual inventors of that patent, such that summary judgment was appropriate. Thus, the district court's grant of summary judgment finding that Dr. Badylak is not a co-inventor of the '265 patent and that Dr. Spievack is an inventor of the '265 patent was proper.
Finally, with respect to PRF's unjust enrichment claim, PRF has not presented evidence to raise a genuine issue of material fact with respect to the district court's grant of summary judgment in ACell's favor. Without a viable claim for unjust enrichment, there is no basis for us to consider whether or not a constructive trust is an appropriate remedy in this case. Thus, there is no reason to disturb the district court's judgment with respect to those issues.
Because the district court erred in construing the terms "urinary bladder submucosa" and "the luminal portion of the tunica mucosa" which formed the basis for the jury's finding of infringement and because, under the correct construction of those terms, there is no material factual dispute that the ACell VetTM product cannot literally infringe claims 1, 7, and 8 of the '389 patent, we therefore reverse the judgment of infringement. Further, because the ACell VetTM product cannot infringe those claims under the doctrine of equivalents without violating the "all limitations rule," it is not necessary to remand for a new trial on infringement under the doctrine of equivalents. In addition, without a direct act of infringement, the judgment finding that Drs. Badylak and Spievack willfully induced ACell to infringe must also be reversed. Because of our conclusion with respect to those issues, Cook's appeal with respect to willfulness and relief are moot. Finally, because the district court did not err in determining on summary judgment that Dr. Badylak is not a co-inventor of the '265 patent, that Dr. Spievack is an inventor of the '265 patent, and that PRF's unjust enrichment claim and consequently its requested remedy of a constructive trust, must fail, we affirm the district court's rulings on those issues.
Apparently based on its rejection of ACell's proposed construction for claim 8, the district court did not require, as part of appellees' infringement case, that they prove that the accused ACell VetTM product could in fact "induce endogenous connective tissue growth" as required by claim 8.
While we recognize that the phrase in the specification refers to the luminal portion s and the claim language refers to the luminal portion, this section of the specification sheds the most light on how the patentee chose to define the claim term.
The district court also relied upon extrinsic evidence in the form of testimony from a Dr. Harbin who convinced the court that there was no compelling reason on the part of Cook to remove the basement membrane, lamina propria, or any other non-cellular component of the bladder wall layers,Markman Order, slip op. at 11. In light of the discussion above, however, such extrinsic evidence cannot override the patentee's definition of the term contained in the intrinsic evidence of the '389 and '508 patent disclosures.
The evidentiary issues pertain to the district court's exclusion of the "pre-September 2002" documents and grant proposals drafted by Drs. Spievack and Badylak. The district court did not abuse its discretion in excluding those documents and in limiting appellees' infringement case to the ACell VetTM commercial product because that was the only allegedly infringing product identified by appellees in the Pretrial Order: "Defendant ACell, Inc. manufactures, sells, uses, and offers for sale a veterinary product under the trade name ACell Vet." Cook Biotech Inc. v. ACell, Inc., No. 4:03-CV-0046 AS, slip op. at 19 (N.D. Ind. Apr.14, 2005).
Cross-appellants characterize the district court's Inventorship Order as having found on summary judgment that Dr. Spievack was the sole inventor of the '265 patent. ACell reframes the issue in its reply to the cross-appeal as whether the district court abused its discretion in holding that cross-appellants could not assert that Dr. Spievack was not an inventor of the '265 patent because cross-appellants failed to raise that issue in the Pretrial Order. With respect to inventorship, the district court's June 22, 2005 Order made the following determinations: (1) cross-appellants were precluded from asserting that Dr. Badylak is the sole inventor of the '265 patent because they failed to raise that theory of inventorship in the their Complaint and the Pretrial Order, Inventorship Order, slip op. at 6-7; (2) cross-appellants' motion for summary judgment that Dr. Badylak is an inventor of the '265 patent was dismissed, id., slip op. at 10; and (3) ACell's Motion for Partial Summary Judgment on Counterclaim Count II (inventorship) to the extent that the district court determined "that Spievak [sic] is an inventor of the '265 patent ...," was granted, id., slip op. at 13 (emphasis added). As can be seen by the quoted portion above, the district court summarily determined that Dr. Spievack is an inventor of the '265 patent, not necessarily the sole inventor. Thus, we refer to the decision as finding that Dr. Spievack is an inventor of the '265 patent. Even if the district court had made the determination that Dr. Spievack is the sole inventor of the '265 patent, we do not find that cross-appellants have raised a genuine issue of material fact such that summary judgment on that issue would not have been appropriately granted for essentially the same reasons discussed herein.