Marctec, LLC v. Johnson & Johnson
| Decision Date | 15 June 2009 |
| Docket Number | Case No. 07-cv-825-DRH. |
| Citation | 638 F.Supp.2d 987 |
| Parties | MARCTEC, LLC, Plaintiff/Counterclaim Defendant, v. JOHNSON & JOHNSON and Cordis Corporation, Defendants/Counterclaim Plaintiffs. |
| Court | U.S. District Court — Southern District of Illinois |
Dominique N. Seymoure, Martin K. Morrissey, Reed Armstrong et al., Edwardsville, IL, Elizabeth Nemo, Garret A. Leach, Margaret M. Dolan, Paul D. Collier, Colby A. Kingsbury, Kristen J. Allen, Kirkland & Ellis LLP, Chicago, IL, William L. Broom, III, Barrett, Twomey et al., Carbondale, IL, for Plaintiff/Counterclaim Defendant.
Christopher Strong, Charles D. Hoffmann, Diana Breaux, Gregory L. Diskant, Irena Royzman, Jason S. Gould, Michael J. Timmons, Scott B. Howard, Patterson Belknap et. al, New York, NY, Alan H. Norman, Jonathan G. Musch, Thompson Coburn, St. Louis, MO, for Defendants/Counterclaim Plaintiffs.
FINDINGS OF FACT, CONCLUSIONS OF LAW, AND ORDER ON DEFENDANTS' MOTION FOR SUMMARY JUDGMENT OF NONINFRINGEMENT
This matter came before the Court on the Motion, pursuant to Rule 56 of the Federal Rules of Civil Procedure, by Cordis Corporation and Johnson & Johnson (collectively "Cordis") for Summary Judgment of Noninfringement of U.S. Patent Nos. 7,128,753 ("the '753 patent") and 7,217,290 ("the '290 patent") (collectively "the patents-in-suit" or "Bonutti patents"). D.I. 68. After consideration of that motion and subsequent briefing (D.I. 108, D.I. 125), the Court makes the following findings of fact, based on the Court's claim construction and facts over which there is no dispute or can be no dispute as a matter of law, as well as, conclusions of law.
1. On July 18, 2008, Cordis moved for summary judgment of noninfringement. D.I. 68.
2. On March 31, 2009, 2009 WL 910200, this Court issued an opinion and order construing disputed claim language from the '753 and '290 patents consistent with the specification and the prosecution history. D.I. 175. Cordis's motion for summary judgment of noninfringement concerns limitations that were construed in that opinion.
3. In order to demonstrate that the Cypher stent infringes the patents-in-suit under the Court's claim construction, MarcTec would need to show, inter alia, that: (1) Cypher is a surgical device or implant, (2) only a portion of the Cypher stent is expandable, (3) the polymers in Cypher's drug-eluting coating do not adhere to the stent at room temperature, (4) the polymers in Cypher's drug-eluting coating are bonded to the device by the application of heat, and (5) "that heat must be sufficient to cause the material to be bonded to become flowable, tacky and adherent." D.I. 175 at 28; see also id. at 23, 26, 29.
4. In this action, plaintiff MarcTec L.L.C. ("MarcTec") alleges that the Cypher stent, sold by defendant Cordis, infringes claims 1-6, 8, 10 and 14 of the '290 patent. Claim 1 is an independent claim. Claims 2-6, 8, 10 and 14 depend from claim 1 and thus incorporate all of its limitations.
5. Claim 1, with the five limitations which are the basis for Cordis's Motion for Summary Judgment of Noninfringement in bold italics and numbered, reads as follows:
[1] An implant for implantation in a human body comprising: a tubular member having a channel and mechanically expandable upon activation of a delivery mechanism from a contracted condition in which the tubular member has a first cross sectional size in a plane perpendicular to a longitudinal central ax is of the tubular member to an expanded condition in which [2] at least a portion of the tubular member has a second cross sectional size in a plane perpendicular to the longitudinal central ax is of the tubular member, the second cross sectional size being larger than the first cross sectional size to thereby lock the tubular member against tissue in the human body; and [3] a first component bonded to at least a portion of the tubular member and formed of a heat bondable material that includes a therapeutic agent selected from the group consisting of a tissue ingrowth promoter and an antibiotic, wherein the heat bondable material is [4] non-flowable and non-adherent at room temperature and [5] becomes flowable, tacky, and adherent upon the application of heat.
6. MarcTec also alleges that the Cypher stent infringes claims 1, 3 and 4 of the '753 patent. Claims 3 and 4 depend from independent claim 1 and thus incorporate all of its limitations.
7. Claim 1, with the five limitations which are the basis for Cordis's motion for summary judgment in bold italics and numbered, reads as follows:
[1] A surgical device for implantation in a body comprising: an [2] implant, at least a portion of which is expandable; and [3] a polymeric material bonded to the implant, wherein the polymeric material is a thermoplastic, includes a therapeutic agent, is [4] nonflowable and non-adherent at room temperature, and [5] becomes flowable, tacky, and adherent upon the application of heat.
8. Dr. Peter Bonutti is a named inventor on both of the patents-in-suit.
9. As the Court previously found, during prosecution of the patents-in-suit, the Patent Office ("PTO") rejected Dr. Bonutti's proposed claims as invalid over U.S. Patent No. 5, 102,417 ("the '417 patent"), which issued to Dr. Julio Palmaz. D.I. 175 at 9; D.I. 70, Ex. L at 3. Dr. Palmaz is the inventor of the balloon-expandable coronary stent. D.I. 175 at 9; D.I. 125, Ex. 2 (Denardo Tr.) 30:14-19. In his early patents, including the '417 patent—written before balloon-expandable stents existed— Dr. Palmaz used the terms "expandable intraluminal vascular graft" and "expandable prosthesis" to refer to stents. D.I. 175 at 9; D.I. 70, Ex. G (Palmaz '417 patent) at 5:26-35, 6:44-54.
10. In the '417 patent, Dr. Palmaz makes a point of distinguishing intraluminal procedures utilizing stents from conventional surgery. D.I. 175 at 9; D.I. 70, Ex. G at 1:26-35.
11. The Palmaz '417 patent is prior art to the patents-in-suit and teaches a polymer/drug coating "placed upon the wall surfaces" of the stent. D.I. 70, Ex. G at 11:3-8, 11:26-34; D.I. 175 at 9.
12. As this Court has found (D.I. 175 at 9-10), when the PTO rejected Dr. Bonutti's claims as invalid over the Palmaz stent (D.I. 70, Ex. L at 3), Dr. Bonutti represented to the PTO—and thus the public— that his invention did not include intraluminal grafts (i.e., stents), and, further, that his invention is directed to devices for use in surgical applications, in contrast to Palmaz's balloon-expandable stent, which is not a surgical device:
Palmaz discloses an expandable intraluminal vascular graft, or expandable prosthesis for a body passageway (col. 6., lns. 21-23).... Applicants, on the other hand, disclose, inter alia, an assembly for use in surgical applications in humans.
13. In addition, Dr. Bonutti represented to the PTO that his invention is different from the device disclosed by Dr. Palmaz because his invention, unlike the device described by Dr. Palmaz, has a material bonded to it by the application of heat. D.I. 175 at 10; D.I. 70, Ex. M at 6. Thus, Dr. Bonutti represented to the PTO that "[i]n contrast [to the device disclosed by Dr. Palmaz], Applicants' implant includes a heat bondable material which is bonded to an implant by the application of heat." D.I. 70, Ex. M at 6 (emphasis added); D.I. 175 at 10. In his '417 patent, Dr. Palmaz does not disclose the use of heat to bond the coating to the stent. D.I. 175 at 10. Dr. Bonutti relied on this difference to differentiate his invention from the prior art Palmaz patent, and, thus, to obtain allowance of his claims. Id.; D.I. 70, Ex. M at 6. As this Court has held, in doing so, "Dr. Bonutti disclaimed devices in which a material is bonded to the device other than by the application of heat." D.I. 175 at 10; see id. at 23.
14. Dr. Bonutti also amended the claims of the patents-in-suit to require that the material bonded to the implant or tubular member "is non-flowable and nonadherent at room temperature and becomes flowable, tacky, and adherent upon the application of heat." D.I. 175 at 10-11; D.I. 70, Ex. M at 2; D.I. 70, Ex. O at 2.
15. The amendment was made in direct response to the Examiner's rejection of the claims as anticipated by the disclosure of a coating with drug "placed upon wall surfaces of tubular shaped members" in the prior art Palmaz patent. D.I. 70, Ex. M at 5-6; D.I. 70, Ex. G at 11:3-8, 11:26-34; D.I. 175 at 11.
16. Dr. Bonutti told the PTO that the purpose of his amendment was to "highlight" the distinction between his invention and the prior art Palmaz patent:
Palmaz teaches an implant including an absorbable polymer coating placed upon wall surfaces of tubular shaped members. In contrast, Applicant's implant includes a heat bondable material which is bonded to an implant by the application of heat.
To highlight this distinction, Applicants have amended independent claims 11 and 27 to include, inter alia, a polymer material which is non-flowable and non-adherent at room temperature and becomes flowable, tacky, and adherent upon the application of heat.
17. As this Court has explained, "this amendment made clear that Dr. Bonutti's invention required the application of heat to a heat bondable material to cause that material to transform from one state (non-flowable and non-adherent) to a different state (flowable, tacky and adherent)." D.I. 175 at 11.
18. In moving for summary judgment of noinfringement, Cordis asserts that undisputed evidence establishes that its Cypher stent does not have several claim limitations of the Bonutti patents, as construed by this Court in its March 31, 2009 claim construction opinion and order (D.I. 175).
19. As construed by this Court, the claims of the patents-in-suit...
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