Advanced Cardiovascular Systems v. Scimed Life
| Decision Date | 22 June 1999 |
| Docket Number | No. C 96-00946 CW.,C 96-00946 CW. |
| Citation | 63 F.Supp.2d 1064 |
| Parties | ADVANCED CARDIOVASCULAR SYSTEMS, INC., a California corporation, Plaintiff, v. SCIMED LIFE SYSTEMS, a Minnesota corporation, Defendant. |
| Court | U.S. District Court — Northern District of California |
Richard H. Abramson, Heller Ehrman White & McAuliffe, Palo Alto, CA, Timothy J. Malloy, Gregory J. Vogler, Edward A. Mas, II, David D. Headrick, James M. Hafertepe, Leland G. Hansen, Stephen H. Bean, Alejandro Menchaca, McAndrews Held & Malloy, Chicago, IL, for Advanced Cardiovascular Systems, Inc., a California corporation, plaintiff.
Philip S. Johnson, Steven B. Samuels, Barbara L. Mullin, Kevin M. Flannery, Henrik D. Parker, Woodcock Washburn Kurtz, Mackiewicz & Norris, Philadelphia, PA, David Eiseman, Quinn Emanuel Urquhart Oliver & Hedges LLP, Palo Alto, CA, David R. Bailey, Woodcock Washburn Kurtz, Mackiewicz & Norris LLP, Philadelphia, PA, for SciMed Life Systems, a Minnesota corporation, defendant.
Martin R. Glick, Howard Rice Nemerovski Canady, Falk & Rabin, San Francisco, CA, pro se.
ORDER GRANTING ACS' MOTIONS FOR SUMMARY JUDGMENT OF VALIDITY AND INFRINGEMENT AND DENYING ACS' MOTION FOR SUMMARY JUDGMENT OF ENFORCEABILITY AND SCIMED'S MOTIONS FOR SUMMARY JUDGMENT OF INVALIDITY AND NO WILLFUL INFRINGEMENT
Plaintiff Advanced Cardiovascular Systems, Inc. (ACS) moves for summary judgment that the asserted claims of U.S. Patent No. 5,496,275 (the Sirhan patent) are valid, enforceable, and infringed by Defendant SciMed Life Systems (SciMed)'s product, the Bandit catheter. SciMed opposes ACS' motions and cross-moves for summary judgment that the Sirhan patent is invalid and not willfully infringed. Having considered all of the papers filed by the parties and oral argument on the motions, the Court grants ACS' motions for summary judgment of validity and infringement and denies ACS' motion for summary judgment of enforceability and SciMed's motions for summary judgment of invalidity and no willful infringement.
This case involves a patent infringement suit brought by ACS against SciMed in regard to a patent for balloon dilatation catheters. ACS and SciMed both develop, manufacture, promote, and sell catheters used to perform intravascular procedures. ACS owns the Sirhan patent, which teaches a balloon dilatation catheter used to perform percutaneous transluminal coronary angioplasty (PTCA) in patients suffering from coronary disease arising from atherosclerosis in the coronary arteries. ACS alleges that SciMed's Bandit and Trio catheters (collectively referred to as the Bandit catheter) infringe the Sirhan patent.
Atherosclerosis is a condition wherein the cells lining the arteries are damaged by, for example, smoking or high blood pressure. As a result of this cellular damage, plaque develops at the site of the damage. A deposit of plaque is called a stenosis or a lesion. These lesions block, and may eventually shut off entirely, blood flow in the arteries.
PTCA provides a means of unblocking affected arteries. In a typical PTCA procedure, a guide catheter is inserted into the patient's femoral artery, located in the upper leg, and advanced until it reaches the blocked artery. The physician then inserts a guidewire into the guide catheter and advances it until it emerges out the distal end of the catheter and crosses the lesion.1 The therapeutic or diagnostic catheter, such as a balloon dilatation catheter, is placed inside the guide catheter and around the guidewire. In procedures utilizing a balloon dilatation catheter, the physician moves the catheter along the guidewire until the balloon is also situated across the lesion. The balloon is then inflated, dilating the artery at the point of the lesion by pressing the plaque to the wall of the artery and thereby reestablishing blood flow through the artery.
The Sirhan patent describes a catheter with a distal section at least ten centimeters long. In this section, an outer tubular member is disposed around an inner tubular member. Between thirty and ninety percent of the inner surface of the outer tubular member is secured to and takes the shape of the outer surface of the inner tubular member. As a result, the two tubular members provide for a passageway, known as a lumen, between the two members along the unsecured portion. The transverse or cross dimensions of the catheter in this distal section are substantially larger in a first direction, across the part where the two members form the lumen, than in a second direction perpendicular to the first.
In the specification, the inventors of the Sirhan patent, Motasim M. Sirhan and Jovito L. Fernando, assert that this combination of attributes constitutes a significant advance in intravascular catheter technology. In particular, the catheter described in the Sirhan patent has a distal section with a reduced profile that improves flexibility, without detrimentally affecting pushability.2 The narrower profile allows the physician more easily to maneuver the catheter through the patient's vasculature, particularly the aortic arch and the smaller coronary arteries where flexibility and catheter dimensions are critical.
The present dispute centers primarily on claim one of the Sirhan patent, which describes fully the catheter's basic attributes:
An elongated catheter for performing an intravascular procedure comprising:
a) an elongated catheter shaft which has a distal section with an inner tubular member having a first inner lumen and a distal end with a port in communication with the first inner lumen and an outer tubular member disposed about the inner tubular member having about 30% to about 90% of the inner periphery thereof along a length of the distal section of at least about 10 cm taking the shape of and being secured to the exterior of the inner tubular member and the outer tubular member having along said length a portion unsecured to the exterior of the inner tubular member, being longitudinally off-set and coextensive with the portion secured and having a second inner lumen extending longitudinally between the inner tubular member and the unsecured portion of the outer tubular member, a transverse cross-section of the distal section along the said length being substantially larger in a first direction than in a second direction perpendicular to the first direction; and
b) means for performing a vascular procedure on the catheter shaft at a location distal to at least a portion of said length.
Sirhan Patent at 8:8-32. Claims four, six, and nine are dependent on claim one and are similarly disputed. Lastly, independent claim ten, and claim eleven which depends on it, are also disputed.
ACS moves for summary judgment that the Sirhan patent is not invalid. Specifically ACS argues that the Sirhan patent is not anticipated by U.S. Application Serial No. 391,419 and European Patent Application No. 90308054.7 (the Coehlo invention), U.S. Patent No. 5,217,440 (the Frassica patent), or U.S. Patent No. 5,769,868 (the Yock '868 patent). In addition, ACS contends that the Sirhan patent is not obvious in light of the Frassica patent, the Coehlo invention, U.S. Patent No. 4,892,519 (the Songer patent), or U.S. Patent No. 2,248,934 (the Auzin patent), considered either separately, in conjunction with one another, or in conjunction with numerous other patents cited by SciMed. ACS also moves for summary judgment that the Sirhan patent is enforceable because ACS has not engaged in any inequitable conduct and for summary judgment that SciMed's Bandit catheter infringes specified claims of the Sirhan patent.
SciMed moves for summary judgment that the Sirhan patent is invalid because it is anticipated by both the Coehlo invention and the Frassica patent and because it is obvious in light of the Coehlo invention. SciMed also moves for summary judgment that it has not willfully infringed the Sirhan patent.
Summary judgment is properly granted when no genuine and disputed issues of material fact remain, and when, viewing the evidence most favorably to the nonmoving party, the movant is clearly entitled to prevail as a matter of law. See Fed.R.Civ.P. 56; Celotex Corp. v. Catrett, 477 U.S. 317, 322-23, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986); Eisenberg v. Insurance Co. of North America, 815 F.2d 1285, 1288-89 (9th Cir.1987).
The moving party bears the burden of showing that there is no material factual dispute. Therefore, the Court must regard as true the opposing party's evidence, if supported by affidavits or other evidentiary material. See Celotex, 477 U.S. at 324, 106 S.Ct. 2548; Eisenberg, 815 F.2d at 1289. The Court must draw all reasonable inferences in favor of the party against whom summary judgment is sought. See Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986); Intel Corp. v. Hartford Accident and Indem. Co., 952 F.2d 1551, 1558 (9th Cir.1991).
Material facts which would preclude entry of summary judgment are those which, under applicable substantive law, may affect the outcome of the case. The substantive law will identify which facts are material. See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986).
"`Summary judgment is as appropriate in a patent case as in any other' when it is shown that no genuine issue of material fact remains for decision and that the movant is entitled to judgment as a matter of law." D.M.I., Inc. v. Deere & Co., 755 F.2d 1570, 1573 (Fed.Cir.1985) (quoting Barmag Barmer Maschinenfabrik A.G. v. Murata Mach., Ltd., 731 F.2d 831, 835 (Fed.Cir.1984)).
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