536 F.3d 1311 (Fed. Cir. 2008), 2007-1297, Voda v. Cordis Corp.

Docket Nº:2007-1297, 2007-1343.
Citation:536 F.3d 1311, 87 U.S.P.Q.2d 1742
Party Name:Jan K. VODA, M.D., Plaintiff-Cross Appellant, v. CORDIS CORPORATION, Defendant-Appellant.
Case Date:August 18, 2008
Court:United States Courts of Appeals, Court of Appeals for the Federal Circuit
 
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536 F.3d 1311 (Fed. Cir. 2008)

87 U.S.P.Q.2d 1742

Jan K. VODA, M.D., Plaintiff-Cross Appellant,

v.

CORDIS CORPORATION, Defendant-Appellant.

Nos. 2007-1297, 2007-1343.

United States Court of Appeals, Federal Circuit.

August 18, 2008

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Mitchell G. Stockwell, Kilpatrick Stockton LLP, of Atlanta, GA, argued for plaintiff-cross appellant. With him on the brief was D. Clay Holloway. Of counsel was Jacqueline R. Knapp. Of counsel on the brief was John A. Kenney, McAfee & Taft, of Oklahoma City, OK.

John M. DiMatteo, Willkie Farr & Gallagher LLP, of New York, NY, argued for defendant-appellant. With him on the brief were Kelsey I. Nix, Diane C. Ragosa, and Adam R. Steinert. Of counsel on the brief was Constantine L. Trela, Jr., Sidley Austin LLP, of Chicago, IL.

Mathias W. Samuel, Fish & Richardson P.C., of Minneapolis, MN, for amicus curiae Boston Scientific Scimed, Inc. With him on the brief were John A. Dragseth and Christian A. Chu.

Before MAYER, BRYSON, and GAJARSA, Circuit Judges.

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GAJARSA, Circuit Judge.

This is a patent infringement case involving catheters used in interventional cardiology. The issues on appeal and cross-appeal include claim construction, patent validity, infringement, willfulness, and the district court's denial of a permanent injunction. Because we find no reversible error in the decision below with respect to the issues of claim construction, patent validity, and the denial of a permanent injunction, we affirm those aspects of the judgment. The judgment of infringement, however, is affirmed-in-part and reversed-in-part. Lastly, because the willfulness finding was based on a jury instruction that is erroneous under our intervening decision in In re Seagate Technology, LLC, 497 F.3d 1360 (Fed.Cir.2007) (en banc), we vacate the judgment with respect to willfulness and remand for reconsideration under the Seagate standard.

PROCEDURAL HISTORY

Employee Retirement Income Security Act of 1974,Dr. Jan K. Voda, M.D., (“Voda" ) sued Cordis Corporation (“Cordis" ) for infringement of U.S. Patent Nos. 5,445,625 (“the '625 patent" ), 6,083,213 (“the '213 patent" ), and 6,475,195 (“the '195 patent" ) in the United States District Court for the Western District of Oklahoma.1 Specifically, Voda alleged that Cordis's “XB" catheters infringe claim 1 of the '625 patent, claims 1 through 5 of the '213 patent, and claims 1 through 6 of the '195 patent. The parties tried the case to a jury, and it returned a verdict finding that Cordis willfully infringed all asserted claims of the patents-in-suit and that claims 1 through 3 of the '213 patent are not invalid. The jury also determined that Voda was entitled to a reasonable royalty of 7.5% of Cordis's gross sales of the infringing XB catheters. Following the jury verdict, the district court denied Cordis's motion for judgment as a matter of law (“JMOL" ) that claims 1 through 3 of the '213 patent are invalid and that Cordis's XB catheters do not infringe any of the asserted claims of the patents-in-suit. The district court also granted Voda's motion for enhanced damages and attorneys' fees but denied Voda's request for a permanent injunction.

On appeal, Cordis challenges the district court's construction of the term “along a line" in claims 1 through 3 of the '213 patent. Cordis also challenges the district court's denial of JMOL that claims 1 through 3 of the ' 213 patent are invalid and that Cordis's XB catheters do not infringe any of the asserted claims of the patents-in-suit. Finally, Cordis argues that the finding of willfulness should be vacated on the ground that the jury instruction on willfulness was erroneous under our recent Seagate decision. On cross-appeal, Voda argues that the district court abused its discretion in denying Voda's request for a permanent injunction. Voda also argues that the district court erred in construing the “substantially straight leg" limitation in claims 4 and 5 of the '213 patent and claims 1 through 6 of the '195 patent.

This court has jurisdiction over this appeal and cross-appeal pursuant to 28 U.S.C. § 1295(a)(1).

BACKGROUND

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

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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.

1. Voda's Patents

The three patents-in-suit are all directed to an “advantageous orientation of the guide catheter in the aortic complex." '625 patent col.8 ll.51-52; ' 213 patent col.8 ll.21-22; '195 patent col.8 ll.25-26. All three patents issued from continuation-in-part applications of a common parent application, namely, U.S. Patent App. No. 07/622,873.

The '625 patent claims guide catheters with “a significant change in the overall shape/configuration" of the catheter in order to “maximize backup support for distal advancement of a balloon catheter through the guide catheter." '625 patent col.7 ll.60-67. Claim 1 of the '625 patent reads as follows:

1. A femoral approach angioplasty guide catheter adapted for selective catheterization of a left main coronary artery within a cardiovascular system comprising:

an elongate flexible tubular member in a relaxed state prior to insertion in the cardiovascular system further comprising in consecutive arrangement:

a first straight proximal portion extending distally from a proximal end of the tubular member;

a second straight portion joined to the first straight portion and having a length of about 1.5 to 2.5 centimeters;

a tertiary curved portion defining a junction of the first straight portion and the second straight portion and defining a vertex of an obtuse angle of 130° to 150° between the first and second straight portions;

a secondary curved portion joined to the second straight portion and having an arcuate curvature of about 150° to 180° and a radius of curvature of about 1 centimeter;

a third straight portion joined to the secondary curved portion;

a fourth straight portion joined to the third straight portion and having a distal end defining a terminal distal tip of the tubular member; and

a primary curved portion a junction of the third straight portion and the fourth straight portion and defining a vertex of an obtuse angle of 140° to 160° between the third and fourth straight portions,

wherein the interiors of the tertiary curved portion and every curve portion distal thereof, including the secondary curved portion and the primary curved portion, all generally face each other,

wherein the first straight portion, second straight portion, third straight portion, and fourth straight portion all lie in generally the same plane, the third straight portion and the fourth straight portion extending slightly out of plane to the extent that the fourth straight portion overlaps the first straight portion, and

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wherein the length of the fourth straight portion is approximately equal to the sum of the length of the third straight portion and the radius of curvature of the secondary curved portion.

'625 patent cols.32-33 (emphasis added). In the written description of the '625 patent, the “second straight portion" is identified as the portion of the catheter that engages the wall of the aorta opposite the coronary ostium during use (along with a proximal portion of the secondary curve portion). Id. at col.9 l.50-col.10 l.4. The engagement of the second straight portion with the wall of the aorta is described as providing “a large area of general backup support ... which makes it quite difficult to dislodge the guide catheter from its desired orientation" during use. Id. Cordis argues that its XB catheters do not infringe claim 1 of the '625 patent because they do not meet the “second straight portion" limitation. For discussion purposes, this opinion will refer to claim 1 of the '625 patent as the “straight claim."

Claims 1 through 3 of the '213 patent are method claims. Claim 1 is representative:

1. A method for advancing a catheter through the aorta and into a coronary ostium, the aorta having an arch and an inner wall opposite the ostium, comprising the steps of:

providing a catheter including an elongate catheter body having a proximal end and a distal end and having a central lumen from the proximal end to the distal end adapted to slidably receive a therapeutic catheter, the catheter body including a tip at the distal end of the catheter body adapted to removably lodge in the coronary artery ostium;

advancing the catheter body distal end through the aortic arch; and

engaging the aorta inner wall with a portion of the catheter body such that when the distal end of the...

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