MEDTRONIC NAVIGATION v. BRAINLAB MEDIZINISCHE

• Decision Date: 26 April 2010
• Docket Number: 2009-1059.,No. 2009-1058,2009-1058
• Citation: 603 F.3d 943
• Parties: MEDTRONIC NAVIGATION, INC. (formerly known as Surgical Navigation Technologies, Inc.), Medtronic Sofamor Danek, Inc., and Sofamor Danek Holdings, Inc., Plaintiffs-Appellants, and St. Louis University and Trustees of Dartmouth College, Plaintiffs, and McDermott Will & Emery LLP, Nonparty-Appellant, v. BRAINLAB MEDIZINISCHE COMPUTERSYSTEME GMBH, BrainLAB AG, BrainLAB USA, Inc., and BrainLAB, Inc., Defendants-Appellees.
• Court: U.S. Court of Appeals — Federal Circuit

603 F.3d 943

MEDTRONIC NAVIGATION, INC. (formerly known as Surgical Navigation Technologies, Inc.), Medtronic Sofamor Danek, Inc., and Sofamor Danek Holdings, Inc., Plaintiffs-Appellants, and St. Louis University and Trustees of Dartmouth College, Plaintiffs, and McDermott Will & Emery LLP, Nonparty-Appellant, v. BRAINLAB MEDIZINISCHE COMPUTERSYSTEME GMBH, BrainLAB AG, BrainLAB USA, Inc., and BrainLAB, Inc., Defendants-Appellees.

Nos. 2009-1058, 2009-1059.

United States Court of Appeals, Federal Circuit.

April 26, 2010.

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Seth P. Waxman, Wilmer Cutler Pickering Hale and Dorr LLP, of Washington, DC, argued for plaintiffs-appellants. With him on the brief were William G. McElwain, Amy J. Nelson; Mark C. Fleming and Felicia H. Ellsworth, of Boston, MA.

Carter G. Phillips, Sidley Austin LLP, of Washington, DC, argued for nonparty-appellant. With him on the brief were Robert N. Hochman and Tacy F. Flint, of Chicago, IL Jay R. Campbell, Renner, Otto, Boisselle & Sklar, LLP, of Cleveland, OH, argued for defendants-appellees. With him on the brief were Joshua M. Ryland, Todd R. Tucker and Kyle B. Fleming. Of counsel was John J. Del Col.

Before NEWMAN, LOURIE, and BRYSON, Circuit Judges.

Opinion for the court filed by Circuit Judge BRYSON. Concurring opinion filed by Circuit Judge LOURIE.

BRYSON, Circuit Judge.

Medtronic Navigation, Inc., Medtronic Sofamor Danek, Inc., and Sofamor Danek Holdings, Inc., (collectively, "Medtronic") and trial counsel McDermott Will & Emery LLP ("McDermott") appeal from a district court order awarding attorney fees, costs, expenses, and interest in the amount of $4,382,031.36. We reverse.

I

Medtronic brought this patent infringement action in 1998. The accused devices included the defendants' VectorVision products, which are image-guided surgical navigation devices that use an array of cameras to detect the position of surgical instruments through triangulation. The VectorVision devices employ a "passive optical" guidance system in which the surgical instruments do not carry signal emitters, but instead carry reflectors that reflect an infrared signal sent from elsewhere. The cameras use those reflections to determine the locations of the surgical instruments relative to the patient. Medtronic also alleged infringement by a similar device known as the ExacTrac, which is used in radiation therapy.

The complaint initially alleged that the defendants (collectively, "BrainLAB") had infringed U.S. Patent No. 5,383,454 ("the Bucholz patent"). Medtronic added three other patents to the suit as it acquired the rights to them. Those patents were U.S. Patent No. 4,722,056 ("the Roberts patent") and U.S. Patent Nos. 5,389,101 and 5,603,318 ("the Heilbrun patents").

The Bucholz patent describes a system and method for tracking and displaying the location of a surgical instrument within a patient's head during brain surgery. The invention uses a "reference means" to detect the locations of the surgical instrument and the patient's head, and then determines their relative positions through triangulation. The only embodiment described in the specification is an acoustic system in which the "reference means" is an array of microphones that receives sound waves from emitters located on the surgical instrument and attached to the patient's head. By processing the information received by the microphones, the system is able to determine the location of the instrument within the patient's body at each moment in time.

The Roberts patent teaches a method, system, and apparatus that takes a scanned image from an imaging system, such as a CT scanner, and maps it onto the image produced by a microscope during a surgical procedure, so that the scanned image can be displayed as an overlay. The specification describes using either acoustic or electromagnetic means to establish the spatial relationship between the microscope and the "fiducials," i.e., points of reference attached to the patient that are detectable by the system. The specification adds, without elaboration, that "an optical system can be used as an alternative to the acoustic system."

The Heilbrun patents disclose an optical reference system used for locating a medical instrument relative to a patient's body within a medical workspace. The Heilbrun apparatus begins by establishing "a workspace coordinate framework in three dimensions." It accomplishes that task by using cameras to make pairs of images of the workspace, including a "fiducial structure," along intersecting sightlines. The system then uses the image pairs to compute the three-dimensional coordinate system.

A

On September 29, 2004, the district court issued a claim construction order. The court construed the Bucholz patent as limited to tracking systems that use acoustic methods and the Roberts patent as limited to tracking systems that use acoustic or electromagnetic methods. The court rejected the broader construction proposed by Medtronic, which described the inventions as using generic "sensors" or "receivers," and not being limited to the use of any particular form of radiation, whether acoustic, optical, or other. In doing so, the court specifically excluded optical methods, such as the ones used by BrainLAB's accused products, from the scope of the claims. The court construed the Heilbrun patents, which described the use of cameras, as limited to tracking systems that employ "a static or immovable coordinate system centered in the workspace that must be reestablished if one or more of the cameras are moved."

Following the court's claim construction, BrainLAB advised the court that it intended to file motions for summary judgment and that it expected that there would not be a need for a trial on many of the asserted claims because "our products are optical and the claims are limited to non-optic products." The district court, however, responded that "there are issues of fact. And, as you know, if we're talking about the doctrine of equivalence, it's hard not to see issues of fact."

In February 2005, BrainLAB moved for summary judgment of noninfringement as to all the asserted patents. Regarding the Bucholz and Roberts patents, BrainLAB argued that its products employed an optical reference means and therefore did not literally infringe. In addition, BrainLAB argued that optical systems are substantially different from acoustic systems and that its products therefore did not infringe under the doctrine of equivalents. BrainLAB also contended that argument-based prosecution history estoppel barred Medtronic from asserting the doctrine of equivalents as to the Bucholz patent. BrainLAB pointed out that the inventor, Dr. Richard Bucholz, had stated to the examiner that his invention, unlike prior art devices, used emitters located on the patient and on the surgical probe. By making that argument, BrainLAB contended, Dr. Bucholz had made a clear and unmistakable disclaimer of "passive" devices, i.e., those that do not rely on emitters located on the patient and the probe. BrainLAB took the position that its products do not infringe the Heilbrun patents because its products use a "dynamic" system with precalibrated cameras, while the Heilbrun patents employ a "static" system that must be recalibrated each time the cameras are moved.

In its briefs in response to BrainLAB's summary judgment motions, Medtronic represented that in view of the court's claim construction, it would not argue for literal infringement of the Bucholz and Roberts patents, but would limit its infringement theory for those patents to the doctrine of equivalents. As for BrainLAB's contention regarding argument-based prosecution history estoppel, Medtronic argued that Dr. Bucholz's statements to the examiner did not constitute a clear and unmistakable disclaimer of passive devices. According to Medtronic, Dr. Bucholz's statements were simply directed at providing further details regarding a particular embodiment, rather than suggesting that the location of the emitters was critical to the claimed invention as a whole. With regard to the Heilbrun patents, Medtronic argued that even if BrainLAB's devices use cameras that are precalibrated relative to one another, the devices still rely on a fiducial structure to establish a coordinate framework within the medical workspace, and that the "dynamic" quality of BrainLAB's system is achieved simply by refreshing the workspace calibration at a rapid and automated rate.

Two weeks before trial, the district court denied the summary judgment motions in full. The court announced its decision orally, stating simply, "On the defendant's motions for summary judgment, I'm denying them. I'm sure that's not coming as a shock to you, but the filings have been helpful.... The papers filed have given me more information as to the parties' respective views of the law that will be applicable in the case."

B

Trial before a jury began on September 12, 2005. Following Medtronic's case-in-chief, BrainLAB moved for judgment as a matter of law ("JMOL") under Rule 50(a) of the Federal Rules of Civil Procedure. In the motion, BrainLAB raised many of the same arguments it had raised in its motions for summary judgment, except that it added an argument that infringement by equivalents under the Bucholz patent was barred by amendment-based prosecution history estoppel. BrainLAB contended that Dr. Bucholz had surrendered all non-acoustic subject matter by adding the term "reference means" to the Bucholz patent, because the district court had later limited that term to mean "an array of microphones." The district court denied the motion at that time, stating that it would "revisit these points ... at the conclusion of all of the evidence when you will renew this motion. And we'll have a better opportunity to read some of this law." With respect to BrainLAB's prosecution history estoppel argument, the...