526 F.3d 487 (9th Cir. 2008), 06-16229, Medtronic, Inc. v. White

Docket Nº:06-16229.
Citation:526 F.3d 487
Party Name:MEDTRONIC, INC., Plaintiff, and Los Angeles Biomedical Research Institute at Harbor-UCLA Medical Center, Intervenor-Appellant, v. Geoffrey WHITE, Defendant-Appellee, v. Edwards Lifesciences LLC; EndoGAD Research Pty Limited, Third-Party-Plaintiffs.
Case Date:May 15, 2008
Court:United States Courts of Appeals, Court of Appeals for the Ninth Circuit

Page 487

526 F.3d 487 (9th Cir. 2008)

MEDTRONIC, INC., Plaintiff,


Los Angeles Biomedical Research Institute at Harbor-UCLA Medical Center, Intervenor-Appellant,


Geoffrey WHITE, Defendant-Appellee,


Edwards Lifesciences LLC; EndoGAD Research Pty Limited, Third-Party-Plaintiffs.

No. 06-16229.

United States Court of Appeals, Ninth Circuit.

May 15, 2008

Argued and Submitted April 15, 2008.

Page 488

[Copyrighted Material Omitted]

Page 489

[Copyrighted Material Omitted]

Page 490

Gordon C. Atkinson and Linda F. Callison, Cooley Godward Kronish LLP, Palo Alto, CA, for the intervenor-appellant.

Mark E. Haddad, Sidley Austin LLP, Los Angeles, CA, for the defendant-appellee.

Appeal from the United States District Court for the Northern District of California; Jeffrey S. White, District Judge, Presiding. D.C. No. CV-04-02201-JSW.


TROTT, Circuit Judge:

Los Angeles Biomedical Research Institute at Harbor-UCLA Medical Center ("L.A. Biomed") appeals the entry of judgment resulting from a jury verdict in favor of defendant Dr. Geoffrey White in a contract dispute over ownership of a patent. L.A. Biomed alleges that the jury instructions contained a number of prejudicial errors. We have jurisdiction under 28 U.S.C. § 1291, and we reverse and remand for a new trial.



Factual Background

L.A. Biomed is a non-profit medical research institute that allows visiting researchers to use its state-of-the-art equipment and facilities. Researchers wishing to use the facilities are generally required to sign a Patent and Copyright Agreement ("P&C Agreement"). In 1985, Dr. White became an assistant professor of surgery at Harbor-UCLA Medical Center and signed L.A. Biomed's P&C Agreement. The P&C Agreement states in pertinent part:

This agreement is made by me with . . . Harbor-UCLA Medical Center, a non-profit corporation, hereinafter referred to as the "Institute", in part consideration of my employment . . . and/or my utilization of Institute research facilities.

I understand and agree that every possibly patentable device, process, or product hereinafter referred to as "invention", which I conceive and/or reduce to practice while employed by the Institute, or during the course of my utilization of any Institute research facilities, shall be examined by the Institute to determine rights and equities therein in accordance with the Institute's Patent and Copyright Policy.


Page 491

I further agree that, in the event any such invention and/or work shall be deemed by the Institute to be patentable . . . and the Institute desires . . . to seek patent . . . protection therein, I shall execute any documents and do all things necessary . . . to assign to the Institute all rights, title and interest therein and to assist the Institute in securing patent . . . protection therein....

(emphasis added).

"Conceive" and "reduce to practice" as used in the P&C Agreement are terms of art used in patent and inventorship law. Because these terms are of central importance to understanding the facts and analysis of this case, we define them at the outset.

"Conceive" means, "the formation in the mind of the inventor, of a definite and permanent idea of the complete and operative invention." Burroughs Wellcome Co. v. Barr Labs., Inc., 40 F.3d 1223, 1228 (Fed. Cir. 1994) (internal quotation marks omitted). "Conception is complete only when the idea is so clearly defined in the inventor's mind that only ordinary skill would be necessary to reduce the invention to practice, without extensive research or experimentation." Id.

"In order to establish . . . reduction to practice, the inventor must prove that: (1) he constructed [the invention]; and (2) he determined that the invention would work for its intended purpose." Cooper v. Goldfarb, 154 F.3d 1321, 1327 (Fed. Cir. 1998).

Dr. White continued to work at Harbor-UCLA Medical Center until 1989, when he returned to Australia where he is a native and citizen. There, he began exploring endovascular repair of abdominal aortic aneurysms. An aortic aneurysm is the "ballooning" of the aorta that if untreated typically results in rupture and death. Endovascular surgery repairs such aneurysms without invasive surgery by delivering a fabric tube referred to as a graft from an incision in the upper thigh through the femoral artery to the location of the aneurysm, where the graft essentially replaces the ballooning section of the aorta.

By 1992, Dr. White, and his colleague Dr. Weiyun Yu, had begun to develop-and eventually invented--a new device that would make it easier precisely to place a graft into the aorta. The device, referred to generally as a graft attachment device ("GAD"), allows a surgeon to adjust the length of a graft within the aorta by placing one graft inside another and then simply adjusting the overlap between them.

At trial, and now on appeal, the parties hotly disputed when the patented GAD was conceived and reduced to practice by Drs. White and Yu. What seems to be agreed on is that the doctors worked on the development of a GAD in Australia until October 1992 when they first attempted, unsuccessfully, to place a version of it into a patient in Sydney. Dr. White then arranged for him and Dr. Yu to have access to L.A. Biomed's facilities during December 1992 and January 1993 to do certain bench tests and to build and implant miniature versions of the GAD into dogs. Dr. Yu was not asked to and did not sign a P&C Agreement at that or any other time. This fact became part of Dr. White's defense.

Besides performing the aforementioned tests and experiments, during those two months Dr. White also did other testing of the GAD at the VA Long Beach and UC Irvine Hospitals. The two doctors then returned to Australia and continued to work on the GAD's development until October, 1993, when Dr. White returned to the VA Long Beach Hospital and successfully

Page 492

implanted an overlapping GAD-graft into a human.

Without notice to L.A. Biomed, Drs. White and Yu filed for two patents on the GAD in 1998. The patents were issued to them in 2003. See U.S. Patent No. 6,582,458 (filed May 1, 1998) (issued June 24, 2003); U.S. Patent No. 6,613,073 (filed Aug. 11, 1998) (issued Sept. 2, 2003). These patents include a number of drawings illustrating the distinct features of the GAD. See, e.g., '458 Patent figs.1-6. As part of the process for obtaining these patents, Dr. White filed in 2000 a sworn declaration with the U.S. Patent and Trademark Office ("the PTO declaration"), which described the progression of the GAD's development. It stated in pertinent part:

(7) Between 1989 and 1992 I began to develop, with Dr. Weiyun Yu, the [GAD].

(8) In 1992 I came to the United States [and] disclosed to Dr. [Samuel E.] Wilson1 the types of materials that could be used to make the graft, how the graft was to be assembled and how the aspects of the graft design would function together.... I believe that the disclosure made to Dr. Wilson was of sufficient detail that [it] would have enabled one of ordinary skill in the art to make an endovascular graft having such features.

(9) In December of 1992 I undertook bench testing of an endovascular graft having features disclosed in [the patent application]. This bench testing occurred at [L.A. Biomed]. The bench testing included placing an endovascular graft inside another graft and balloon expanding the endovascular graft therein. The grafts used were made by Dr. Weiyun Yu and me, at my instruction, and had the features of a wireform supported prosthesis which could be overlapped with another similar prosthesis. More than twenty grafts were tested and the bench tests indicated that one graft could be supported within another.

(10) .... In September of 1993 . . . I performed a procedure in Sydney, Australia, wherein I repaired a patient's aortic aneurysm using an endovascular graft....

(11) .... On October 6, 1993, I performed an endovascular repair of an abdominal aortic aneurysm utilizing an endovascular...

To continue reading