Advanced Cardiovascular Systems

• Decision Date: 06 August 2001
• Citation: 261 F.3d 1329
• Parties: (Fed. Cir. 2001) ADVANCED CARDIOVASCULAR SYSTEMS, INC. and GUIDANT SALES CORPORATION, Plaintiffs-Appellants, v. SCIMED LIFE SYSTEMS, INC. and BOSTON SCIENTIFIC CORPORATION, Defendants-Appellees. 00-1454 DECIDED:
• Court: U.S. Court of Appeals — Federal Circuit

Page 1329

261 F.3d 1329 (Fed. Cir. 2001)

ADVANCED CARDIOVASCULAR SYSTEMS, INC. and GUIDANT SALES CORPORATION, Plaintiffs-Appellants, v. SCIMED LIFE SYSTEMS, INC. and BOSTON SCIENTIFIC CORPORATION, Defendants-Appellees.

00-1454

United States Court of Appeals for the Federal Circuit

DECIDED: August 6, 2001

Appealed from: U.S. District Court for the Southern District of Indiana Judge David F. Hamilton

Richard A. Bardin, Fulwider Patton Lee & Utecht, LLP, of Los Angeles, California, argued for plaintiffs-appellants. With him on the brief were Craig B. Bailey and James Juo. Of counsel on the brief were Harvey Kurzweil, Clark E. Walter, Aldo A. Badini, and Bradford J. Badke, Dewey Ballantine LLP, of New York, New York.

Walter E. Hanely, Jr., Kenyon & Kenyon, of New York, New York, argued for defendants-appellees. With him on the brief were Charles R. Brainard, Douglas E. Ringel, and Reem F. Jishi. Of counsel were Paul H. Heller, of New York, New York; and Mark Michael Supko, of Washington, DC.

Before MICHEL, Circuit Judge, ARCHER, Senior Circuit Judge, and SCHALL, Circuit Judge.

SCHALL, Circuit Judge.

Advanced Cardiovascular Systems, Inc. and Guidant Sales Corp. (collectively, "ACS") appeal the decision of the United States District Court for the Southern District of Indiana granting summary judgment in favor of Scimed Life Systems, Inc. and Boston Scientific Corporation (collectively, "Scimed") in ACS's suit against Scimed for patent infringement. Adv. Cardiovascular Sys., Inc. v. Scimed Life Sys., Inc., No. 98-1108 (S.D. Ind. June 28, 2000) ("Adv. Cardiovascular IV"). The district court ruled that Scimed was entitled to summary judgment that it did not infringe the asserted claims of United States Patent Nos. 5,421,955 (the " '955 patent"), 5,514,154 (the " '154 patent"), 5,603,721 (the " '721 patent"), 5,728,158 (the " '158 patent"), and 5,735,893 (the " '893 patent"). Id. The patents at issue relate to a flexible coronary stent that is adapted to be placed in a patient's blood vessel, expand, and then stay expanded, thereby keeping the involved segment of the vessel open. The asserted claims are directed to the stent, methods for using the stent, and a process for making the stent.

We vacate the district court's grant of summary judgment of non- infringement with respect to claims 11 and 12 of the '955 patent, claims 1- 4, 9, and 23 of the '154 patent, claims 1-4 of the '721 patent, and claims 1, 2, 5, 6, 9, and 11-13 of the '158 patent, because the grant of summary judgment was based on an erroneous construction of the term "connecting elements," and the similar terms "interconnected," "connecting members," and "struts for connecting." The court erred in construing these terms as requiring that the stent's connecting elements be parallel both to each other and to the longitudinal axis of the stent. We also vacate the district court's grant of summary judgment of non-infringement with respect to claims 12-15, 17, 18, and 20 of the '154 patent. We do so because the court erred in construing the phrase "generally parallel connecting elements" to require the connecting elements to be generally parallel to the stent's longitudinal axis, and because it is unclear, from the intrinsic evidence, under what frame of reference the claims require the connecting elements to be generally parallel to each other. We affirm, however, the district court's grant of summary judgment of non-infringement with respect to claims 10 and 21 of the '154 patent, claims 14-16, 19, and 20 of the '158 patent, and claims 1, 2, and 4-13 of the '893 patent. The case is remanded to the district court for further proceedings.

BACKGROUND

I.

The '955, '154, '721, '158, and '893 patents all are assigned to ACS. Each patent relates back to two original abandoned applications, Application No. 07/783,558 (the " '558 application"), filed on October 28, 1991, and Application No. 08/164,986 (the " '986 application"), filed on December 9, 1993. Since they all are related to the '558 and '986 applications, the patents have similar specifications and drawings.

The '154 patent's specification and drawings are representative of the specifications and drawings of all of the patents in suit. The '154 patent is directed to "an expandable stent which is relatively flexible along its longitudinal axis to facilitate delivery through [a blood vessel], but which is stiff and stable enough radially in an expanded condition to maintain" free passage through a vessel in which the invention is implanted. '154 patent, col. 1, ll. 53-58. The stent 10 is depicted below in Figures 3 and 4 of the '154 patent.

[Tabular or Graphical Material Omitted]

Figure 3 shows the stent 10 inside an artery 15. Id. at col. 5, ll. 11-28. The specification describes stent 10 as having a "plurality of radially expandable cylindrical elements," identified as 12 in Figures 3 and 4, that can each "expand and . . . flex relative to one another." Id. at col. 1, ll. 59-62. "Interconnecting elements or struts," also called "connecting elements" and identified as 13 in Figures 3 and 4, "extend . . . between adjacent cylindrical elements" and "provide increased stability and a preferable position to prevent warping of the stent upon the expansion thereof." Id. at col. 1, l. 65 - col. 2, l. 1. The stent is placed on a balloon or other expandable member. Thereafter, once the stent is placed at the desired location in a blood vessel, the balloon is inflated, the stent expands, and the balloon is removed, leaving the stent in its expanded state, against the blood vessel's walls 15, as shown in Figure 3. Id. at col. 4, l. 57 - col. 5, l. 10.

The '154 patent notes that "[p]referably, all of the interconnecting elements of the stent are joined at either the peaks or the valleys of the undulating structure of the cylindrical elements . . . . In this manner there is no shortening of the stent upon expansion." Id. at col. 2, l. 67 - col. 3, l. 4; see also id. at col. 5, ll. 42-51. This configuration is demonstrated in Figures 3 and 4 of the '154 patent, shown above.

Claim 1 of the '154 patent is directed to the stent itself, and is representative of the apparatus claims asserted by ACS. Claim 1 reads:

1. A longitudinally flexible stent for implanting in a body lumen, comprising:

a plurality of cylindrical elements which are independently expandable in the radial direction and which are interconnected so as to be generally aligned on a common longitudinal axis;

a plurality of connecting elements for interconnecting said cylindrical elements, said connecting elements configured to interconnect only said cylindrical elements that are adjacent to each other; and

an outer wall surface on said cylindrical elements, said outer wall surface being smooth prior to expansion of said stent and forming a plurality of outwardly projecting edges which form as said stent is expanded radially outwardly from a first diameter to a second, enlarged diameter.

Id. at col. 8, ll. 36-52. Independent claim 12 differs from claim 1, describing "a plurality of generally parallel connecting elements . . . ." Id. at col. 9, l. 28 (emphasis added).

The '154 patent is a descendant of the '558 application. The '558 application included claims directed to an expandable, flexible stent, a method of using the stent, a process for making the stent, and a kit that included the stent. Some of the '558 application's claims were rejected as being anticipated by United States Patent No. 5,102,417, which was issued to Julio C. Palmaz (the "Palmaz '417 patent"). The '558 application's claims were amended in response to the rejection, but the examiner maintained his rejection based on the Palmaz '417 patent.

The '986 application was filed as a continuation of the '558 application. Eventually, a preliminary amendment to the '986 application was filed, amending certain claims of the application to recite "a plurality of generally parallel connecting elements for interconnecting said cylindrical elements . . . ." (emphasis added). The inventors argued that the amended claims were patentable over the Palmaz '417 patent. The examiner maintained his rejection, however. The '154 patent then was filed as a continuation- in-part of the '986 application, and the '986 application was abandoned. The '154 patent's claims, directed to an expandable, flexible stent, were allowed. Most of the asserted claims of the '154 patent, such as independent claim 1, simply recite "connecting elements," see '154 patent, col. 8, ll. 36, 52, while other asserted claims, independent claim 12 for example, recite "generally parallel connecting elements," see id. at col. 9, ll. 23-33.

The '955 patent was filed as a continuation of the '558 application, and the '558 application then was abandoned. The '955 patent's claims are directed to a process for making the expandable, flexible stent.¹ Claims 11 and 12 of the '955 patent, the asserted claims, describe the claimed cylindrical elements as being "interconnected," but do not expressly describe the interconnections as being "parallel." '955 patent, col. 8, l. 57 - col. 9, l. 10.

The '721 patent was filed as a divisional of the '154 patent; it claims a method for using the expandable, flexible stent. The asserted claims of the '721 patent describe the stent as having cylindrical elements that are "interconnected." However, like the asserted claims of the '955 patent, they do not state that the interconnections are "parallel." '721 patent, col. 8, l. 33 - col. 10, l. 6.

The '158 patent was filed as a divisional of the '721 patent; its claims are directed to an expandable, flexible stent. Most of the '158 patent claims that ACS asserts against Scimed recite a "longitudinally flexible stent" that has a "plurality of connecting elements." '158 patent, col. 8, l. 47 - col. 10, l. 52. Asserted dependent claim 2, however, recites a stent in claim 1 "wherein said connecting elements are generally parallel to...