124 F.3d 1419 (Fed. Cir. 1997), 96-1508, B. Braun Medical, Inc. v. Abbott Laboratories

Docket Nº:96-1508, 96-1525.
Citation:124 F.3d 1419
Party Name:43 U.S.P.Q.2d 1896 B. BRAUN MEDICAL, INC., Plaintiff-Appellant, v. ABBOTT LABORATORIES and NP Medical, Inc., Defendants/Cross-Appellants.
Case Date:September 08, 1997
Court:United States Courts of Appeals, Court of Appeals for the Federal Circuit

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124 F.3d 1419 (Fed. Cir. 1997)

43 U.S.P.Q.2d 1896

B. BRAUN MEDICAL, INC., Plaintiff-Appellant,


ABBOTT LABORATORIES and NP Medical, Inc., Defendants/Cross-Appellants.

Nos. 96-1508, 96-1525.

United States Court of Appeals, Federal Circuit

September 8, 1997

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William G. Todd, Hopgood, Calimafde, Kalil & Judlowe, L.L.P., New York City, argued, for plaintiff-appellant. With him on the brief were Porter F. Fleming and Richard E. Parke. Of counsel was Albert G. Bixler, Connolly Epstein Chicco Foxman Engelmyer & Ewing, Philadelphia, PA.

Lee Carl Bromberg, Bromberg & Sunstein LLP, Boston, MA, argued, for defendants/cross-appellants. With him on the brief were Robert L. Kann, Timothy M. Murphy and Kerry L. Timbers. Of counsel was Judith R.S. Stern.

Before MICHEL, PLAGER and CLEVENGER, Circuit Judges.

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CLEVENGER, Circuit Judge.

B. Braun Medical, Inc. (Braun) appeals from the district court's judgment, following a jury trial, that Braun misused its patent, was equitably estopped from asserting its patent, and that, in any event, the accused devices did not infringe the asserted claims of Braun's patent. Abbott Laboratories (Abbott) cross-appeals, seeking attorney fees and damages for Braun's patent misuse. We conclude that the district court erred with respect to its treatment of equitable estoppel and patent misuse. Accordingly, we affirm-in-part, reverse-in-part, vacate-in-part, and remand for further proceedings.


The patent in suit, U.S. Patent No. 4,683,916 (the '916 patent), is generally directed to a reflux valve that attaches to an intravenous (IV) line and permits injection or aspiration of fluids by means of a needleless syringe. This type of valve provides safety benefits to health care professionals by reducing the risk of needlestick injuries, which might transmit blood-borne pathogens. Since 1987, Braun has sold an embodiment of the patented reflux valve under the commercial name SafSite TM. The '916 patent contains drawings, reproduced below, that correspond to the SafSite TM valve:


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As these drawings show, the valve is formed of a resilient disc 50 sandwiched between two body elements 11 and 25 that fit together. Body element 25 includes a triangular member 40, which supports the center of the resilient disc 50. Body element 11 includes member 60, which, when engaged by a syringe, presses down on the resilient disc 50 to open the normally closed valve.

Beginning in early 1991, Braun and Abbott representatives discussed the purchase by Abbott of the patented SafSite TM valves. Braun informed Abbott that although it was willing to sell SafSite TM valves to Abbott for use on Abbott's primary line and piggyback sets, it would not sell those valves for use on an extension set. 1 In a letter dated October 23, 1991, Randy Prozeller, Abbott's General Manager of Fluid Systems, agreed that his company would abide by these restrictions: "We will honor your company's demand that we not use the valve in question for list numbers other than our primary and primary piggyback sets." Pursuant to this arrangement, Abbott purchased approximately 536,000 SafSite TM valves.

Meanwhile, negotiations continued between Abbott and Braun for purchase of the SafSite TM valves for use with Abbott's extension sets. Because the parties could not reach agreement on these terms, Abbott requested that NP Medical, Inc. (NP Medical) develop a substitute valve. After extensive development, NP Medical developed the accused product: the NP Medical Luer Activated Valve (LAV). The novel aspects of this new valve were claimed in U.S. Patent No. 5,190,067 to Paradis and Kotsifas.

On July 20, 1993, Braun sued Abbott and NP Medical, alleging that the NP Medical LAV infringed claims 1 and 2 of the '916 patent. The primary claim at issue in the present case recites (numbering added): 2

  1. A valve device comprising:

a first body element having an input opening therethrough;

a second body element which complements said first body element and having an outlet opening therefrom;

a resilient valve disc mountable between said first and second body elements;

first means with one body element for supporting the disc at the center thereof;

means with the other body element for holding said disc firmly against said first means in such a manner that said disc is restrained from sideways movement; and

means adjacent said valve disc for engagement by a syringe to open said normally closed disc to permit injection and aspiration of fluids through the device.

The defendants denied infringement, challenged validity and asserted the equitable defenses of patent misuse, estoppel and implied license. Over Braun's objections, the district court submitted all issues, including interpretation of the claims in suit, to the jury. In November 1994, the jury determined that the '916 patent was not invalid and not infringed by the accused NP Medical LAV. The jury found no infringement because it construed the fifth element of the claims as requiring a traverse cross bar, or its equivalent, which it found lacking in the accused products. The jury also determined that Braun was estopped from charging the defendants with infringement, and that Braun had misused the '916 patent. Finally, the jury rejected the defendants' implied license defense.

On the basis of the patent misuse finding, Abbott sought damages pursuant to its declaratory judgment counterclaim. Following an additional eight-day trial on this issue, the jury decided that Braun's alleged patent misuse had not caused any damages to Abbott. After the district court entered judgment on all issues, Abbott filed a motion for attorney fees, contending that the case was exceptional. The district court denied this motion and explained that Braun had presented "sufficient

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evidence and legal support to more than negate the possibility of bad faith or gross negligence on its part in bringing the infringement claim." Both parties appeal those portions of the district court's judgment that are adverse to them.


Before reaching the merits, we first address Braun's contentions that the district court erred by submitting all issues to the jury. Braun preserved this issue by objecting both during trial and in its post verdict motion for judgment as a matter of law. Upon submitting all issues to the jury over Braun's objections, the court indicated that if it were later determined that those issues were "for the court only, I will advise [sic, accept] the jury verdict as advisory."

As to claim interpretation, we note that this case was submitted to the jury in 1994, before this court's opinion in Markman v. Westview Instruments, Inc., 52 F.3d 967, 979, 34 USPQ2d 1321, 1329 (Fed.Cir.1995) (in banc), aff'd, 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577, 38 USPQ2d 1461 (1996), which held that claim interpretation is a question of law. Because we agree with the jury's interpretation in this case, any error that the district court may have committed is harmless.

As to the issues of equitable estoppel and patent misuse, the district court submitted the issues to the jury based not on its authority to seek an advisory verdict under Fed.R.Civ.P. 39(c), but rather based on the authority provided by Fed.R.Civ.P. 39(b), which states:

(b) By the Court. Issues not demanded for trial by jury as provided in Rule 38 shall be tried by the court; but, notwithstanding the failure of a party to demand a jury in an action in which such a demand might have been made of right, the court in its discretion upon motion may order a trial by a jury of any or all issues.

To our knowledge, only a few courts have considered whether equitable issues may be tried to a jury over objection, pursuant to the authority provided in Rule 39(b). These courts have concluded that the discretionary authority provided by the rule does not authorize jury trial of equitable issues. See, e.g., New Hampshire Fire Ins. Co. v. Perkins, 28 F.R.D. 588, 592 (D.Del.1961); Coates v. Union Oil Co., 176 F.Supp. 713, 715 (D.Colo.1959); see also 9 Charles Alan Wright, Arthur R. Miller, and Mary Kay Kane, Federal Practice and Procedure § 2334 (2d ed.1983). On the other hand, with regard to at least certain equitable issues, our sister circuits are divided on whether such equitable issues may be tried to a jury based on authority separate from that of Rule 39(b). Compare Newhouse v. McCormick & Co., 110 F.3d 635, 641-43 (8th Cir.1997) (following rule of Second, Fourth, Seventh and Tenth Circuits barring jury trial of the equitable issue of front pay) with Cassino v. Reichhold Chem., Inc., 817 F.2d 1338, 1347 (9th Cir.1987) (following rule in Third, Fifth, Sixth and Ninth Circuits allowing jury to determine amount of front pay).

The intricacies of Rule 39, and the question of whether a court may ever submit an equitable issue to the jury over objection, are not the focus of the briefing or argument in this case. We need not decide whether the submission of the equitable issues to the jury itself is reversible error, because, for the reasons set forth below, our rulings on both issues relieve Braun of any harmful consequences occasioned by the submission of those issues to the jury.


The first issue on appeal concerns the jury's verdict that the accused products do not infringe the '916 patent. The jury determined that "[c]laim one claims only the traverse bar and equivalents thereof." Because the NP Medical LAV lacked a traverse bar or an equivalent thereof, the jury returned a verdict of no infringement either literally or under the doctrine of equivalents. On appeal, the focal point of Braun's argument is...

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