Cardiac Pacemakers, Inc. v. St. Jude Medical, Inc.
| Decision Date | 01 March 2006 |
| Docket Number | No. IP961718DFHTAB.,IP961718DFHTAB. |
| Citation | 418 F.Supp.2d 1021 |
| Parties | CARDIAC PACEMAKERS, INC., Guidant Sales Corporation, Mirowski Family Ventures, LLC, and Anna Mirowski, Plaintiffs, v. ST. JUDE MEDICAL, INC., and Pacesetter, Inc., Defendants. |
| Court | U.S. District Court — Southern District of Indiana |
Appeal from the District Court for the Southern District of Indiana, 2002 WL 1801525.
COPYRIGHT MATERIAL OMITTED
J. Michael Jakes, Kara Farnandez Stoll, Michael Andre Morin, Michael Vincent O'Shaughnessy, Finnegan Henderson Farabow Garrett & Dunner, LLP, Washington, DC, John R. Schaibley, III, Robert K. Stanley, Baker & Daniels, Indianapolis, IN, for Plaintiffs.
Daniel Pierre Muino, Frederick Brown, Gibson Dunn & Crutcher LLP, San Francisco, CA, David A. Segal, Gibson Dunn & Crutcher LLP, Irvine, CA, Denis R. Salmon, H. Mark Lyon, Y. Ernest Hsin, Gibson Dunn & Crutcher LLP, Palo Alto, CA, Jay G. Taylor, Michael T. McNally, Philip A. Whistler, Thomas Eugene Mixdorf, Ice Miller LLP, Indianapolis, IN, Jeffrey M. Olson, Sidley Austin Brown & Wood LLP, Los Angeles, CA, for Defendants.
ENTRY AFTER REMAND ON CLAIM CONSTRUCTION AND MOTIONS FOR PARTIAL SUMMARY JUDGMENT
This patent infringement action was filed more than nine years ago. At the outset, plaintiffs asserted infringement of numerous claims under four patents relating to implantable cardiac defibrillators. A trial in 2001 on claims for infringement of four claims of two patents resulted in a verdict awarding plaintiffs $140 million in royalties for infringement of two claims of one patent, United States Patent No. 4,316,472. Following trial, this court resolved various post-trial motions and entered judgment for defendants on all claims. Both sides appealed to the United States Court of Appeals for the Federal Circuit. The Federal Circuit affirmed in part and remanded in part for reconsideration of the court's construction of the "determining" step limitation of Claim 4 of a different patent, United States Patent No. 4,407,288, and for a possible new trial of that one claim. Cardiac Pacemakers, Inc. v. St. Jude Medical, Inc., 381 F.3d 1371 (Fed. Cir.2004).
Claim 4 of the '288 patent is a method patent. A trial on that one remaining claim is scheduled for later this year. The parties have submitted proposed claim constructions for the disputed "determining" step limitation of Claim 4. Defendants have also asked the court to reinterpret the other limitations of Claim 4 in light of the revised claim construction of the "determining" step. In addition, both sides have filed several motions for summary judgment, only some of which are resolved by this Entry. The motions addressed here seek to narrow the scope of any new trial in terms of the defenses that would be available to defendants and the damages that could be pursued by plaintiffs.
As explained below, the court intends to adopt plaintiffs' proposed claim construction of the "determining" step limitation of Claim 4 of the motion for summary judgment on defendants' affirmative defenses and counterclaims. The court denies defendants' motion as to plaintiffs' claim for lost profits, and grants in part and denies in part defendants' motion to limit damages to implantable cardiac defibrillators shown to have used the claimed method in the United States.
Plaintiffs in this case are Cardiac Pacemakers, Inc., Guidant Sales Corporation, Mirowski Family Ventures, LLC, and Anna Mirowski (collectively, "CPI"). Defendants are St. Jude Medical, Inc. and Pacesetter, Inc. (collectively, "St.Jude").
CPI's sole remaining claim in this case alleges that St. Jude infringed its patent for a method used to evaluate and treat abnormal rhythms of a patient's heart. The relevant patent is United States Patent No. 4,407,288 ("the '288 patent"), which expired in December 2003, after the first trial in this case. In general, the '288 patent claims improvements enabling "multimode" operation by implantable cardiac defibrillators ("ICDs"). ICDs are small, powerful devices implanted under the skin of a heart patient. They can detect abnormal heart rhythms, including ventricular fibrillation, which renders a person unconscious in seconds and is fatal within a few minutes unless corrected. Upon detecting an abnormal heart rhythm, an ICD can administer different types of electrical shocks to restore a normal rhythm to the heart. The '288 patent addresses "multimode" operation, meaning that the device can respond to an arrhythmia first with one type of electrical therapy and then, if the first therapy is not successful, can proceed automatically to administer other types or modes of electrical therapy until the heart resumes a normal rhythm. Modes of electrical therapy carried out by the ICDs may include cardiac pacing (low power) and automatic defibrillation (with very powerful shocks), as well as "cardioversion," an intermediate form of therapy discussed below. A more detailed discussion of the technology is available in the court's numerous prior written decisions, including the original Entry on Claim Construction Issues, Cardiac Pacemakers, Inc. v. St. Jude Medical Inc., 2000 WL 1765358 (S.D.Ind. Nov. 29, 2000) (Docket No. 365), and the Amended Entry on Post-Verdict Motions, Cardiac Pacemakers, Inc. v. St. Jude Medical, Inc., 2002 WL 1801525 (S.D.Ind. July 5, 2002) (Docket No. 960).
The only remaining claim at issue here is Claim 4 of the '288 patent. Claim 4, including Claim 1 on which it depends, claims:
1. A method of heart stimulation using an implantable heart stimulator capable of detecting a plurality of arrhythmias and capable of being programmed to undergo a single or multi-mode operation to treat a detected arrhythmia, corresponding to said mode of operation the method comprising the steps of:
(a) determining a condition of the heart from among a plurality of conditions of the heart;
(b) selecting at least one mode of operation of the implantable heart stimulator which operation includes a unique sequence of events corresponding to said determined condition; and
(c) executing said at least one mode of operation of said implantable heart stimulator thereby to treat said determined heart condition.
4. The method of claim 1, wherein said at least one mode of operation of said implantable heart stimulator includes cardioversion.
'288 patent, col. 21, ll. 9-32.
An overview of this case's procedural history is essential to understand the current motions. In June 2001, a jury heard CPI's claims for patent infringement against St. Jude on two claims in the '472 patent and two in the '288 patent. The jury rendered a mixed verdict. It found that St. Jude had infringed the '472 patent, and it rejected St. Jude's defenses that the '472 patent was invalid for failure to comply with the written description requirement of 35 U.S.C. § 112 ¶ 1, for obviousness, and for obviousness-type double patenting. The jury also found that St. Jude's infringement was not willful.
With regard to the '288 patent, the jury found that St. Jude had not infringed. The jury also rejected St. Jude's defenses that the '288 patent was invalid for failure to comply with the best mode requirement of 35 U.S.C. § 112 ¶ 1 and for obviousness, and that the '288 patent should be unenforceable because of CPI's allegedly inequitable conduct.
The jury found that CPI had not proved any lost profits, but the jury awarded royalties for infringement of the '472 patent in the amount of $140 million.
Following trial, the court resolved numerous post-verdict motions that essentially decided for St. Jude on both patents and conditionally granted a new trial on several issues on which it did not prevail at trial. With respect to the '472 patent, the court granted St. Jude's motion for judgment as a matter of law, finding that neither one of the two claims of the '472 patent had been infringed. The court granted a conditional new trial on that issue with respect to Claim 18, but not for Claim 1. The court also addressed several of St. Jude's defenses relating to the '472 patent. First, the court found that the two claims of the '472 patent were invalid for failure to satisfy the written description requirement and granted St. Jude's JMOL motion and, alternatively, granted a conditional new trial on this defense. The court also found the two claims of the '472 patent invalid for obviousness-type double patenting, and granted St. Jude's JMOL motion, but denied its alternative request for a new trial. Finally, the court denied both St. Jude's JMOL motion and its alternative motion for a new trial on its obviousness defense to the two claims of the '472 patent.
With regard to the '288 patent, CPI requested a new trial on infringement, alleging that it had been denied a fair trial because of St. Jude's opening statement and its presentation to the jury to discuss the inconsistent reports of one of CPI's experts. By way of background, the court and St. Jude learned during the trial that CPI's primary expert, Dr. Joseph Bourland, gave incorrect testimony in his pretrial deposition and on the witness stand about his involvement in another pending ICD patent infringement action. The court therefore permitted St. Jude to point out to the jury the inconsistencies between the reports Dr. Bourland had authored for each of the two cases. After trial, the court allowed St. Jude to conduct discovery on Dr. Bourland's actions and testimony. Dr. Bourland admitted after trial that he had not been just honestly mistaken, but had deliberately lied in his trial testimony. Finding that CPI had not been denied a fair trial on this (or any other) basis, the court denied CPI's request for a new trial. The court also granted St. Jude's motion for sanctions and for a conditional new...
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