Lexicon Medical v. Northgate Technologies, Smith & Nephew, and Livatec (CAFC 2007-1420) non-precedential

On the invention -

Lexion's '474 and '609 patents disclose and claim a method and apparatus for heating and humidifying the gas used to inflate a patient's abdomen during laparoscopic surgery. The heated gas helps reduce the side effects of post-operative shivering and shoulder pain frequently experienced following laparoscopic surgery.

Claim Construction

The district court construed "means for heating" and "means for humidifying" in '474 with prosecution estoppel attached, owing to amending claims to overcome 4,825,863 (Dittmar). The CAFC didn't agree. Proper application of prosecution estoppel remains something of a black art. Festo created a claim construction sorcerer.

In our view, the attempt to distinguish Dittmar was limited in scope to those particular claims that explicitly recited the allegedly disclaimed subject matter.

Because the alleged disclaimer corresponds precisely with the limitations expressly recited in those particular claims, and was clearly in response to a rejection of those particular claims, any disclaimer must accordingly be limited to those claims, under our approach set forth in Golight, Inc., v. Wal-Mart Stores, Inc., 355 F.3d 1327, 1333 (Fed. Cir. 2004) (limiting disclaimer to the particular claims that explicitly recited the allegedly disclaimed subject matter, and declining to extend disclaimer to claims that did not). Here, the alleged disclaimer clearly arose in connection with the rejected claims reciting a humidifying means "in the path of travel of the gas" and a heating means "disposed within the humidification means," and any resulting disclaimer must therefore be limited to those claims.

[B]ecause the disputed statements in the prosecution history are subject to multiple reasonable interpretations, they do not constitute the clear and unmistakable surrender required to trigger prosecution disclaimer. See Golight, 355 F.3d at 1332.

This altered claim construction for some '474 claims. The CAFC vacated and remanded on that.

See Union Carbide Chems. & Plastics Tech. Corp. v. Shell Oil Co., 308 F.3d 1167, 1179 (Fed. Cir. 2002) (remanding for further proceedings without reaching the merits of the district court's underlying conclusions because the district court's judgment was based upon an incorrect claim construction).

We therefore vacate the judgment of infringement and remand the case to the district court for further proceedings on the issue of infringement. See Harris Corp. v. Ericsson Inc., 417 F.3d 1241, 1260 (Fed. Cir. 2005) (vacating the jury verdict of infringement and remanding for further proceedings under the proper claim construction). We of course vacate as well the permanent injunction entered against Northgate.

Other '474 claim constructions argued over were left unaltered.

Enhanced Damages

The district court denied willful infringement in light of "In re Seagate Tech., LLC, 497 F.3d 1360 (Fed. Cir. 2007), [where] proof of willful infringement requires at least a showing of objective recklessness, id. at 1371." The district court nonetheless awarded enhanced damages.

Before entry of a permanent injunction, Northgate liquidated its remaining inventory of Humi-Flow devices. In response, Lexion moved to modify the judgment to include enhanced damages for willful infringement. The district court denied the motion, however, electing instead to award compensatory damages for the post-verdict sales, as well as the attorney fees incurred by Lexion in bringing its motion.

Oddly -

Northgate has not challenged the district court's award to Lexion of compensatory damages and attorney fees. If, after remand proceedings, the judgment of infringement is reinstated, the district court can reinstate as well its award of compensatory damages and attorney fees.

Prior Art Invalidity

Obzilla's dance on '609 remained. '609 was not related to '474, so '474 was prior art, rendering '609 "a predictable variation."

Prior to trial, the district court granted JMOL of obviousness with respect to the '609 patent. On appeal, Lexion contends that the district courts' grant of JMOL was erroneous for reasons which we find unpersuasive. The '609 patent simply modifies the invention described in the '474 patent via a simple and minor improvement: adding a recharge part that allows for the replenishment of water for extended use during laparoscopic surgeries. In KSR, the Supreme Court stated:

[w]hen a work is available in one field, design incentives and other market forces can prompt variations of it, either in the same field or in another. If a person of ordinary skill in the art can implement a predictable variation, and would see the benefit of doing so, § 103 likely bars its patentability.

Id. at 1731. We think that the '609 patent was nothing more than a predictable variation or improvement of the '474 patent that was well within the skill and ordinary creativity of a skilled artisan. We therefore affirm the district court's grant of JMOL of obviousness with respect to the '609 patent.

Affirmed-in-part, vacated-in-part, remanded.