Jan K. Voda v. Cordis (CAFC 2007-1297)

Technical background on treating a bad ticker with a suction stick:

Cardiac guide catheters have been used to diagnose and treat heart disease since the late 1960s. A cardiac guide catheter is a long thin plastic tube with a preformed tip that comes in a variety of sizes and configurations. The method of using a cardiac guide catheter involves first inserting a wire into the catheter to straighten the preformed tip. Once the wire is inside the catheter, the catheter is inserted into the femoral artery and advanced to the aorta of the heart. The catheter is further advanced up the descending aorta, over the aortic arch, and down the ascending aorta until the tip of the catheter reaches a position at or near the opening (i.e., "ostium") of the coronary artery. The wire is then removed from the catheter, which allows the tip of the catheter to return to its preformed shape. As the catheter tip returns to its shape, it moves into the desired position: specifically, the tip of the catheter is inserted into the coronary ostium while another portion of the catheter rests against the opposing wall of the aorta to provide support. Hereinafter, the portion of a guide catheter that rests against the opposing wall of the aorta is referred to as the "contact portion" of the guide catheter.

Claim construction case law:

Claim terms must be given "the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention." Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). That meaning is determined by reference to several sources, including "'the words of the claims themselves, the remainder of the specification, the prosecution history, and extrinsic evidence concerning relevant scientific principles, the meaning of technical terms, and the state of the art.'" Id. at 1314 (quoting Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1116 (Fed. Cir. 2004)). This court has further explained that "Phillips teaches that these sources should be accorded relative weights depending on the circumstances of the case, with intrinsic sources being the most relevant." Microprocessor Enhancement Corp. v. Tex. Instruments Inc., 520 F.3d 1367, 1378 (Fed. Cir. 2008) (citing Phillips, 415 F.3d at 1314-19).

Cordis wanted a narrower construction to mount a noninfringement position. Specifically, Cordis wanted to twist the phrase "along a line" to be something more than that, something "straight". Nothing doing. The case law supporting the conclusion of "straight" lacking support in the claims, specification, and prosecution history -

See Phillips, 415 F.3d at 1314 ("[T]he context in which a term is used in the asserted claim can be highly instructive.")... See Phillips, 415 F.3d at 1314 ("Differences among claims can also be a useful guide in understanding the meaning of particular claim terms."); see also Curtiss-Wright Flow Control Corp. v. Velan, Inc., 438 F.3d 1374, 1380-81 (Fed. Cir. 2006) (discussing the doctrine of claim differentiation as applied to independent claims).

Although the use of "along a line" does not by itself support Cordis's construction, the words of the claims "must be read in view of the specification, of which they are a part." Phillips, 415 F.3d at 1315 (quotation omitted). Indeed, "the specification may reveal an intentional disclaimer, or disavowal, of claim scope by the inventor." Id. at 1316. However, any such disclaimer "must be clear." Conoco, Inc. v. Energy & Envtl. Int'l, L.C., 460 F.3d 1349, 1357 (Fed. Cir. 2006); see also Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002) ("The patentee may demonstrate an intent to deviate from the ordinary and accustomed meaning of a claim term by including in the specification expressions of manifest exclusion or restriction, representing a clear disavowal of claim scope.") However, this court has cautioned against importing limitations from the specification into the claims. Phillips, 415 F.3d at 1323. Moreover, this court has recognized that "the distinction between using the specification to interpret the meaning of a claim and importing limitations from the specification into the claim can be a difficult one to apply in practice." Id.; see also Comark Commc'ns, Inc. v. Harris Corp., 156 F.3d 1182, 1186-87 (Fed. Cir. 1998).

In construing patent claims, a court may consult the patent's prosecution history, if it is in evidence. Phillips, 415 F.3d at 1317. The prosecution history can assist the court in understanding how an inventor understood and described his invention and whether the inventor disclaimed or disavowed certain subject matter from the scope of his claims. Id. This court has emphasized, however, that in order to disavow claim scope during prosecution "a patent applicant must clearly and unambiguously express surrender of subject matter." Sorensen v. Int'l Trade Comm'n, 427 F.3d 1375, 1378-79 (Fed. Cir. 2005); see also Omega Eng'g, Inc., v. Raytek Corp., 334 F.3d 1314, 1325-26 (Fed. Cir. 2003) ("[F]or prosecution disclaimer to attach, our precedent requires that the alleged disavowing actions or statements made during prosecution be both clear and unmistakable.").

Prior art failed to anticipate or find obvious.

Anticipation is a question of fact that is reviewed for substantial evidence when tried to a jury. Finisar, 523 F.3d at 1334. "Anticipation requires disclosure of each and every claim limitation in a single prior art reference, either explicitly or inherently." In re Omeprazole Patent Litig., 483 F.3d 1364, 1371 (Fed. Cir. 2007).

Section 103 of Title 35 of the U.S. Code "forbids issuance of a patent when 'the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art.'" KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1729 (2007) (quoting 35 U.S.C. § 103). "When reviewing a district court's JMOL determination as to obviousness, '[t]his court reviews a jury's conclusions on obviousness, a question of law, without deference, and the underlying findings of fact, whether explicit or implicit within the verdict, for substantial evidence.'" Finisar, 523 F.3d at 1338 (quoting Dippin' Dots, Inc. v. Mosey, 476 F.3d 1337, 1343 (Fed. Cir. 2007) (quotation omitted)).

Some claims were found infringed under the doctrine of equivalents.

Under the doctrine of equivalents, "a product or process that does not literally infringe upon the express terms of a patent claim may nonetheless be found to infringe if there is 'equivalence' between the elements of the accused product or process and the claimed elements of the patented invention." Warner-Jenkinson Co., Inc. v. Hilton Davis Chem. Co., 520 U.S. 17, 21 (1997) (citing Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 609 (1950)); see also Dawn Equip. Co. v. Ky. Farms, Inc., 140 F.3d 1009, 1015 (Fed. Cir. 1998) (explaining that to prove infringement under the doctrine of equivalents, "the accused device must be shown to include an equivalent for each literally absent claim limitation"). However, the use of the doctrine of equivalents to establish infringement is limited by the doctrine of prosecution history estoppel. Warner-Jenkinson, 520 U.S. at 30. In particular, "prosecution history estoppel limits the broad application of the doctrine of equivalents by barring an equivalents argument for subject matter relinquished when a patent claim is narrowed during prosecution." Conoco, 460 F.3d at 1363 (citations omitted).

This court applies two articulations of the test for equivalence. See Warner-Jenkinson, 520 U.S. at 40 (explaining that different phrasings of the test for equivalence may be "more suitable to different cases, depending on their particular facts"). Under the insubstantial differences test, "[a]n element in the accused device is equivalent to a claim limitation if the only differences between the two are insubstantial." Honeywell Int'l Inc. v. Hamilton Sundstrand Corp., 370 F.3d 1131, 1139 (Fed. Cir 2004). Alternatively, under the function-way-result test, an element in the accused device is equivalent to a claim limitation if it "performs substantially the same function in substantially the same way to obtain substantially the same result." Schoell v. Regal Marine Indus., Inc., 247 F.3d 1202, 1209-10 (Fed. Cir. 2001).

But Cordis struck a vein in reversing infringement of a couple claims, prosecution estoppel barring application of doctrine of equivalents.

This court has explained that "prosecution history estoppel can occur during prosecution in one of two ways, either (1) [when the applicant makes] a narrowing amendment to the claim ('amendment-based estoppel') or (2) [when the applicant surrenders] claim scope through argument to the patent examiner ('argument-based estoppel')." Conoco, 460 F.3d at 1363 (citations omitted).

Under amendment-based estoppel, "[a] patentee's decision to narrow his claims through amendment may be presumed to be a general disclaimer of the territory between the original claim and the amended claim." Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., 535 U.S. 722, 740-41 (2002) (citations omitted). However, "the patentee can overcome the presumption that prosecution history estoppel bars a finding of equivalence" by showing: (1) that the equivalent was unforeseeable at the time of the patent application; (2) that the rationale underlying the amendment bore "no more than a tangential relation to the equivalent in question"; or (3) "some other reason suggesting that the patentee could not reasonably be expected to have described the insubstantial substitute in question." Id.

Under amendment-based estoppel, Voda is presumed to have disclaimed methods that do not involve catheters with a first substantially straight leg. See Festo, 535 U.S. at 740-41. Moreover, Voda has failed to make any argument to overcome this presumption. Accordingly, the prosecution history of claims 4 and 5 of the '213 patent bars a finding of equivalence between the redesigned curve portion of the Cordis catheters and "first substantially straight leg" limitation. The district court therefore erred in denying Cordis's post-trial motion for JMOL that it does not infringe claims 4 and 5 of the '213 patent under the doctrine of equivalents. We therefore reverse the finding of infringement with respect to these claims.

Forging new law by court fiat, placing the willfulness bar recklessly high, "under the new Seagate standard for willfulness, "proof of willful infringement permitting enhanced damages requires at least a showing of objective recklessness.""

In In re Seagate, 497 F.3d 1360 (Fed. Cir. 2007) (en banc), this court overruled the standard of willfulness adopted in Underwater Devices Inc. v. Morrison-Knudsen Co., 717 F.2d 1380 (Fed. Cir. 1983). The Underwater Devices standard for willfulness imposed an affirmative duty of care on potential infringers to determine whether their conduct was infringing if they had notice of another party's patent rights. 717 F.2d at 1389-90. Under the new Seagate standard for willfulness, "proof of willful infringement permitting enhanced damages requires at least a showing of objective recklessness." 497 F.3d at 1371. "[T]o establish willful infringement, a patentee must show by clear and convincing evidence that the infringer acted despite an objectively high likelihood that its actions constituted infringement of a valid patent." Id. "If this threshold objective standard is satisfied, the patentee must also demonstrate that this objectively-defined risk (determined by the record developed in the infringement proceeding) was either known or so obvious that it should have been known to the accused infringer." Id. The Seagate decision also clarified that there is "no affirmative obligation to obtain opinion of counsel" in order to avoid liability for willful infringement. Id.

Cordis hadn't opposed the jury instruction until after it had its effect. While both parties agreed that Seagate changed the rules, it remained unclear whether Cordis had, in purposeful imitation, leapt that bar. This case shows how ridiculous the Seagate standard is.

In this case, the district court issued its jury instruction on the standard for willful infringement prior to the issuance of Seagate. The district court instructed the jury, inter alia, that "[w]hen a person becomes aware that a patent may have relevance to his or her activities, that person has a duty to exercise due care and to investigate whether or not his or her activities or proposed activities infringe any valid, enforceable claim of the patent." Voda v. Cordis Corp., No. 03-CV-1512, slip op. at *46 (W.D. Okla. May 25, 2006) (Jury Instructions). Cordis did not object to this jury instruction at trial. However, on appeal, Cordis seeks a new trial on willfulness under the new standard for willfulness adopted in Seagate.

The parties agree that the jury instruction on willfulness was erroneous under Seagate. Nonetheless, Voda argues that the willfulness finding should be upheld because the error in the jury instruction was harmless. Specifically, Voda argues that the instructional error was harmless because the evidence showed that Cordis's XB catheters were intentional copies of the Voda catheters. However, Voda points to no evidence that shows that the accused Cordis XB catheters are literal copies of Voda's patented catheters. Indeed, Voda admits that Cordis redesigned its XB catheters before the issuance of the patents-in-suit, making "slight changes" to the original XB catheter that had copied Voda's catheters. Cross-Appellant Br. at 7. In addition, Cordis points to evidence showing that it obtained several opinions of counsel regarding whether its redesigned XB catheters infringed Voda's patents. Given this record, we find that a jury instruction in accord with the Seagate objective recklessness standard may have changed the result of the jury verdict on willfulness. Accordingly, we vacate the finding of willfulness and remand for a determination of whether Cordis's infringement was willful under the objective recklessness standard of Seagate. On remand, the district court may at its discretion assess Voda's evidence of willful infringement under the Seagate standard to determine whether a new trial on willfulness is necessary or whether Voda's evidence is insufficient as a matter of law to support a finding of willfulness. See Hilton Davis Chem. Co. v. Warner-Jenkinson Co., Inc., 114 F.3d 1161, 1164 (Fed. Cir. 1997) (remanding case to district court based on intervening change in the law). Additionally, we reject Cordis's argument that, under the Seventh Amendment, a new trial on willfulness would require a new trial on infringement.

Permanent injunctions are now off limits to inventors not competing in the marketplace. In denial of reality, the court refuses to call that categorical.

In eBay Inc. v. MercExchange, L.L.C., the Supreme Court held that a plaintiff seeking a permanent injunction in a patent case must demonstrate:

(1) that it has suffered an irreparable injury; (2) that remedies available at law, such as monetary damages, are inadequate to compensate for that injury; (3) that, considering the balance of hardships between the plaintiff and defendant, a remedy in equity is warranted; and (4) that the public interest would not be disserved by a permanent injunction.

547 U.S. 388, 391 (2006).

In this case, the district court found that Voda had not identified any irreparable injury to himself due to Cordis's infringement of his patents and also failed to show that monetary damages are inadequate to compensate for Cordis's infringement. The district court explained that Voda had attempted to prove irreparable injury by alleging irreparable harm to his exclusive licensee, rather than himself. Voda argues that the district court erred in adopting a categorical rule that precludes a patent owner from proving its entitlement to an injunction by showing irreparable harm to its exclusive licensee. Specifically, Voda argues that such a categorical rule conflicts with eBay. In eBay, the Court explained that:

[S]ome patent holders, such as university researchers or self-made inventors, might reasonably prefer to license their patents, rather than undertake efforts to secure the financing necessary to bring their works to market themselves. Such patent holders may be able to satisfy the traditional four-factor test, and we see no basis for categorically denying them the opportunity to do so. To the extent that the District Court adopted such a categorical rule, then, its analysis cannot be squared with the principles of equity adopted by Congress.

Id. at 393. We disagree with Voda that the denial of a permanent injunction in this case conflicts with eBay. The Supreme Court held only that patent owners that license their patents rather than practice them "may be able to satisfy the traditional four-factor test" for a permanent injunction. Id. (emphasis added). Nothing in eBay eliminates the requirement that the party seeking a permanent injunction must show that "it has suffered an irreparable injury." Id. (emphasis added). Moreover, we conclude that the district court did not clearly err in finding that Voda failed to show that Cordis's infringement caused him irreparable injury. In addition, we find that the district court did not clearly err or abuse its discretion in finding that monetary damages were adequate to compensate Voda. Accordingly, we affirm the district court's denial of Voda's request for a permanent injunction.

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