Applied Medical Resources Corp. v. U.S. Surgical Corp., No. 97-1526

• Court: United States Courts of Appeals. United States Court of Appeals for the Federal Circuit
• Writing for the Court: Before MAYER, Chief Judge, PLAGER and SCHALL; MAYER
• Citation: 147 F.3d 1374,47 USPQ2d 1289
• Parties: APPLIED MEDICAL RESOURCES CORPORATION, Plaintiff-Appellee, v. UNITED STATES SURGICAL CORPORATION, Defendant-Appellant.
• Decision Date: 30 June 1998
• Docket Number: No. 97-1526

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147 F.3d 1374 47 U.S.P.Q.2d 1289 APPLIED MEDICAL RESOURCES CORPORATION, Plaintiff-Appellee,
v.
UNITED STATES SURGICAL CORPORATION, Defendant-Appellant. No. 97-1526. United States Court of Appeals,
Federal Circuit. June 30, 1998.
Rehearing Denied; Suggestion for Rehearing In Banc
Declined Aug. 21, 1998.

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William K. West, Jr., Pillsbury Madison & Sutro LLP, of Washington, DC, argued for plaintiff-appellee. With him on the brief were Michael A. Conley, and David W. Long.

J. Allan Galbraith, Williams & Connolly, of Washington, DC, argued for defendant-appellant. Of counsel on the brief were Thomas R. Bremer and John C. Andres, United States Surgical Corporation, of Norwalk, Connecticut.

Before MAYER, Chief Judge, PLAGER and SCHALL, Circuit Judges.

MAYER, Chief Judge.

United States Surgical Corporation appeals from the judgment of the United States District Court for the Eastern District of Virginia, Civ. Action No. 96-CV-1217 (June 10, 1997). We affirm.

Background

Applied Medical Resources Corporation (Applied Medical) owns United States Patents Nos. 5,209,737, 5,308,336, and 5,385,553, all relating to advances in trocar seal technology. ¹ Applied Medical sued United States Surgical Corporation (Surgical) for, inter alia, infringing claims 1 and 32 of the '737 patent, claims 4 and 23 of the '336 patent, and claim 18 of the '553 patent with its Versaport trocar, and for infringing claim 4 of the '553 patent with its Premium Surgiport Seal Adapter System. Surgical denied infringement and advanced an affirmative defense that the Sure-Seal floating valve and the EndoPort five millimeter trocar anticipated the asserted claims of the '553 patent. It also advanced as an affirmative defense that the inventors of all three patents failed to disclose the best mode of practicing the inventions. Surgical moved for summary judgment on the basis of these defenses. Finding factual disputes, the court denied Surgical's motion on anticipation, but deferred judgment on the alleged violations of the best mode requirement until the close of evidence.

The jury found all three patents infringed and not invalid. The jury also found the infringements to be willful and fixed damages at a single royalty rate of seven percent. The court denied Surgical's renewed motion under Federal Rule of Civil Procedure 50(b) for judgment as a matter of law, permanently enjoined Surgical from making or selling the infringing devices, and enhanced damages to a total in excess of twenty million dollars.

Surgical appeals the trial court's ruling on the affirmative defenses, its decision to exclude from evidence the opinion of an administrative patent judge resolving a patent interference proceeding, and its circumscription of expert testimony relating to the possible range of means-plus-function equivalents.

Discussion

We review a trial court's decision on a motion for judgment as a matter of law following a jury verdict by reapplying its own standard of review. See, e.g., Dana Corp. v. IPC Ltd. Partnership, 860 F.2d 415, 417, 8 USPQ2d 1692, 1694 (Fed.Cir.1988). Therefore, for Surgical to prevail on appeal it must prove that the jury's factual findings were not supported by substantial evidence or that the facts were not sufficient to support the conclusions necessarily drawn by the jury on the way to its verdict, see, e.g., Unidisco, Inc. v. Schattner, 824 F.2d 965, 967, 3 USPQ2d 1439, 1441 (Fed.Cir.1987); D.M.I., Inc. v. Deere & Co., 802 F.2d 421, 425, 231 USPQ 276, 278 (Fed.Cir.1986); Railroad Dynamics, Inc. v. A. Stucki Co., 727 F.2d 1506, 1512-13, 220 USPQ 929, 936 (Fed.Cir.1984), or that the trial court applied the law erroneously, see, e.g., Dana Corp., 860 F.2d at 418, 8 USPQ2d at 1695.

The trial court may grant Surgical's motion for judgment as a matter of law only if, upon the record before the jury, it was convinced that reasonable persons could not reach a verdict for Applied Medical. See, e.g., Railroad Dynamics, 727 F.2d at 1513, 220 USPQ at 936. Thus, on appeal we must consider the evidence of record in the light

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most favorable to Applied Medical, drawing all reasonable inferences in its favor, without disturbing the jury's credibility determinations or substituting our resolutions of conflicting evidence for those of the jury. See, e.g., Connell v. Sears Roebuck & Co., 722 F.2d 1542, 1546, 220 USPQ 193, 197 (Fed.Cir.1983).

Best Mode

The first paragraph of section 112 provides in relevant part that the specification "shall set forth the best mode contemplated by the inventor of carrying out his invention." 35 U.S.C. § 112 p 1 (1994). We have held that this analysis includes two components:

The first is whether at the time the inventor filed his patent application, he knew of a mode of practicing his claimed invention that he considered to be better than any other. This part of the inquiry is wholly subjective, and resolves whether the inventor must disclose any facts in addition to those sufficient for enablement. If the inventor in fact contemplated such a preferred mode, the second part of the analysis compares what he knew with what he disclosed--is the disclosure adequate to enable one skilled in the art to practice the best mode or, in other words, has the inventor "concealed" his preferred mode from the "public"? Assessing the adequacy of the disclosure, as opposed to its necessity, is largely an objective inquiry that depends upon the scope of the claimed invention and the level of skill in the art.

Chemcast Corp. v. Arco Indus. Corp., 913 F.2d 923, 927-28, 16 USPQ2d 1033, 1036-37 (Fed.Cir.1990). Because the first component focuses on the applicant's state of mind, a question of fact, we review this aspect of the jury's verdict for substantial evidence. See, e.g., In re Hayes Microcomputer Prods., Inc., 982 F.2d 1527, 1536, 25 USPQ2d 1241, 1248 (Fed.Cir.1992); Chemcast, 913 F.2d at 928, 16 USPQ2d at 1037. In so doing, we observe that an applicant is obliged to disclose nonclaimed elements necessary to the operation or carrying out of the invention to which the patent is directed. See, e.g., Dana Corp., 860 F.2d at 418, 8 USPQ2d at 1695 (fluoride surface treatment "necessary to satisfactory performance of [the] seal"); Chemcast, 913 F.2d at 928, 16 USPQ2d at 1037. However, where the invention relates only to a part of, or one aspect of, a device, an applicant is not required to disclose a nonclaimed element necessary to the operation of the overall device, but not necessary to the operation of the invention to which the patent is directed.

Surgical correctly notes that each asserted claim contains a trocar seal limitation and that the patents disclose a preference for a soft, stretchy and sticky seal made of low durometer polymer material, such as C-flex TM. From these facts, Surgical concludes that the patents are invalid for failing to disclose the use of Parylene-C--which at some point became the preferred lubricant for coating the seal--because a coating, such as Parylene-C, is necessary to prevent tearing. ²

Surgical relies on the testimony of a named inventor, Mark Ritchart and the testimony of a technical expert, Ronald Luther, to prove that the three inventions could not work without Parylene-C. However, Applied Medical challenged this testimony with the testimony of Charles Hart and Barry Feinberg, and the cross-examination of Ritchart, explaining that while a lubricant like Parylene-C is necessary to the operation of the trocar and the seal, it plays no role in the functioning of the pre-seal dilator, the seal protector, and the floating seal, which, Messrs. Hart and Feinberg explained, are the inventions to which the '737, '336, and '553 patents are directed, respectively.

It is evident from the patents that they are directed to the inventions of a seal pre-dilator, a seal protector, and a seal floater. It is in this respect that we reach a different result than we did in Dana Corp., 860 F.2d 415, 8 USPQ2d 1692, where the fluoride surface...