Vas-Cath Inc. v. Mahurkar
| Decision Date | 27 August 1990 |
| Docket Number | Civ. A. No. 88 C 4997. |
| Citation | 745 F. Supp. 517 |
| Parties | VAS-CATH INCORPORATED and Gambro, Inc., Plaintiffs-Counterclaim Defendants, v. Sakharam D. MAHURKAR and Quinton Instruments Company, Defendants-Counterclaim Plaintiffs. Sakharam D. MAHURKAR and Quinton Instruments Company, Counterclaim Plaintiffs, v. Geoffrey MARTIN, M. Jane Martin, and Omni Medical Products Inc., Counterclaim Defendants. |
| Court | U.S. District Court — Northern District of Illinois |
Roy H. Wepner, Joseph S. Littenberg, John R. Nelson, Lerner, David, Littenberg, Krumholz & Mentlik, Westfield, N.J., Daniel W. Vittum, Jr., Russell E. Levine, Kirkland & Ellis, Chicago, Ill., for Vas-Cath Inc., Gambro, Inc. and Omni Medical Products, Inc.
Arthur Sternberg, Pedersen & Houpt P.C., Chicago, Ill., Local counsel, for Gambro, Inc., for notice purposes only.
Michael W. Coffield, Michael J. Philippi, Coffield, Ungaretti, Harris & Slavin, Chicago, Ill., for Geoffrey Martin and M. Jane Martin.
Samuel Fifer, Sonnenschein Nath & Rosenthal, Chicago, Ill., for Quinton Instruments Co.
Joseph N. Hosteny, Raymond P. Niro, John C. Janka, Niro, Scavone, Haller & Niro, Ltd., Chicago, Ill., for Sakharam D. Mahurkar and Quinton Instruments Co.
Sakharam D. Mahurkar, a physician, holds several patents on dual-lumen hemo-dialysis catheters. A dual-lumen catheter is a pair of tubes (lumens) designed to allow blood to be removed from an artery, processed in a machine that removes impurities, and returned close to the place of removal.
Hemodialysis catheters are used to palliate kidney failure. In the event of chronic failure, physicians construct a fistula, a permanent internal connection between vein and artery that provides ready, longterm access to the circulatory system. During the several weeks required for the fistula to mature and heal, physicians need another entry point, which the catheter provides. In the event of acute failure, immediate access is essential, again via catheter.
Catheters cause trauma on insertion and while they remain. Every entry of a needle injures the blood vessel, the walls of which eventually collapse. The fewer entries, the better. The more comfort, the better. (Sometimes patients try to rip out catheters that aggravate them.) A catheter also should allow a high rate of flow without injury to the blood. Whirlpools, eddies, sharp edges, and collisions with rigid walls can rupture the red cells, which may lead to "hemolysis" (inability of the blood to carry sufficient oxygen) and to clotting. Either can cause brain damage or the death of the patient. Knowledge of fluid dynamics and the structure of the blood and vascular system is essential to design a catheter that can handle the necessary rate of flow at an acceptable rate of injury to the red cells.
Dual-lumen catheters allow the return and removal of blood with a single insertion. For years physicians used coaxial dual-lumen catheters. Blood leaves the body through the large outer tube and returns through the inner tube. In the cross-sectional diagram (Figure 1) the shaded area is the inner (return) tube, and the unshaded area the annulus through which blood is withdrawn.
The tip of the inner tube extends beyond the inlet, so that the cleansed blood is returned "downstream". Coaxial catheters usually were inserted surgically. Even so, inaccurate centering in the blood vessel could produce substantial damage to the blood, as could eddies that developed in the fluid motion.
The dual-lumen catheters covered by Dr. Mahurkar's patents take a different approach. Instead of concentric circles, they use joined semi-circular tubes, as the following figure shows. The shaded areas in this figure are the walls.
These tubes come to a single tip, a conic section with two openings. The opening at the tip (downstream) releases the cleansed blood; the other opening takes it in. Figure 3 shows illustrations of such a tip, from one of Dr. Mahurkar's patents.
Dual-lumen catheters of this construction may be inserted without surgery. Their small tip, coupled with the holes near the tip, allows physicians to use the "Seldinger technique": a wire guides the catheter into place. It may remain in place for weeks, so that one insertion is enough to complete the transition to the use of a fistula. The puncture area of a coaxial catheter is 42% greater than that of a semi-circular catheter carrying the same quantity of blood. And semi-circular designs with conical tips yield low rates of injury to the blood.
Catheters of this general construction are the medical community's first choice today for temporary access. Coaxial catheters are obsolete. Dr. Mahurkar's particular catheters have been successful, and they appear to represent more than half of the world's sales.
Vas-Cath Incorporated and its licensee Gambro, Inc. (the American subsidiary of Sopamed SA, the Swiss subsidiary of Gambro AB, a Swedish corporation), filed this suit seeking a declaratory judgment that their dual-lumen hemodialysis catheters do not infringe Dr. Mahurkar's U.S. patents. The complaint contends that (i) those patents are invalid, (ii) Geoffrey Martin, Vas-Cath's principal, is a co-inventor entitled to practice the patents, and (iii) the claims of the patents do not cover Vas-Cath's catheters. This suit is complex not only because of the many legal issues but also because Dr. Mahurkar holds numerous patents, and Vas-Cath's catheters have gone through two generations. Each generation of catheters must be assessed under each patent. As the case has proceeded, the Patent Office has issued some additional patents, which have been added to the litigation.
Mahurkar and his licensee Quinton Instruments Co. (a subsidiary of American Home Products Corp.) filed a counterclaim against Vas-Cath, contending that Vas-Cath's products infringe his patents. Mahurkar seeks an injunction and damages. Mahurkar brought into the suit Geoffrey Martin and his wife M. Jane Martin, as principals and stockholders of Vas-Cath, and Omni Medical Products Incorporated. The nature of the claims against these defendants is not important for current purposes. For simplicity, I call Mahurkar and Quinton "Mahurkar", and everyone else "Vas-Cath", except in Part III of this opinion when it becomes necessary to distinguish them.
Each side requests summary judgment. More precisely, each side requests summary judgment on particular counts and issues. All agree that summary judgment is not yet (and may never be) appropriate on all claims. The Rules of Civil Procedure do not expressly authorize motions for partial summary judgment. Nonetheless, the Manual for Complex Litigation § 21.34 (2d ed. 1985), recommends that judges pare off issues that may be resolved as a matter of law. The Advisory Committee on Civil Rules has recommended an amendment to Fed.R.Civ.P. 56 that if adopted would make official the practice of issuing legal rulings that dispose of issues but not the whole suit (or even entire claims). 127 F.R.D. 258, 370-85 (1989). The new caption of the rule conveys its scope: "Summary Establishment of Fact and Law; Summary Judgment". Both sides ask me to cut down the scope of this dispute, as if the proposal were already in force. I shall do so without attempting to resolve the suit, or particular counts, in full. After considering this opinion, the parties may propose an order that will put these rulings into effect.
Dr. Mahurkar's patents include Nos. 4,568,329 and 4,692,141. Vas-Cath asks me to declare these invalid under 35 U.S.C. § 102(b), contending that they were anticipated by Canadian Industrial Design No. 50089, which issued on August 9, 1982. The parties agree that this patent (Canadian '089) contains drawings identical, except for labels, to those underlying the U.S. '329 and '141 patents. No surprise, for Canadian '089 is also Dr. Mahurkar's patent.
An invention is unpatentable if it was "described in a printed publication in this or a foreign country ... more than a year prior to the date of the application for patent in the United States". 35 U.S.C. § 102(b). Mahurkar applied for the '329 and '141 patents more than a year after August 9, 1982. Although it may seem odd that an inventor can be "anticipated" by his own work, the parties agree that Canadian '089 qualifies as a prior publication under § 102(b). Section 102(b) requires inventors to apply for U.S. patents with dispatch. They cannot lollygag while other persons start making an item and claim their patent at convenience, a maneuver that could both mousetrap business rivals and extend the effective life of the patent beyond 17 years.
Mahurkar does not deny that if the '329 and '141 patents take their own filing date, they are invalid. This outcome follows from his concession (for purposes of this motion) that Canadian '089 is enough to allow practice of the invention and therefore to anticipate the '329 and '141 patents. Ralston Purina Co. v. Far-Mar-Co, Inc., 772 F.2d 1570, 1574-75 (Fed.Cir.1985). He submits, however, that they should be treated as if filed on March 8, 1982, when he applied for a U.S. design patent, Serial No. 356,081. Mahurkar abandoned serial '081 in 1984, after he applied for the utility patents that became '329 and '141. Because the drawing underlying serial '081 is functionally identical to Canadian '089 and illustrates the '329 and '141 patents, Mahurkar invokes 35 U.S.C. § 120, which gives an application the same filing date as "an application for patent for an invention disclosed in the manner provided by the first paragraph of section 112 in an application previously filed in the United States". Serial '081 qualifies under this language, Mahurkar submits, and so the '329 and '141 patents have filing dates before Canadian '089.
Vas-Cath meets this by contending that serial '081 does not satisfy the requirements of the first paragraph of § 112, which are:
The specification shall contain a written description of the...
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