Becton Dickinson and Co. v. C.R. Bard, Inc.

• Decision Date: 13 December 1990
• Docket Number: No. 90-1013,90-1013
• Citation: 17 USPQ2d 1097,922 F.2d 792
• Parties: BECTON DICKINSON AND COMPANY, Plaintiff-Appellant, v. C.R. BARD, INC., Defendant-Appellee.
• Court: U.S. Court of Appeals — Federal Circuit

Page 792

922 F.2d 792

17 U.S.P.Q.2d 1097

BECTON DICKINSON AND COMPANY, Plaintiff-Appellant, v. C.R. BARD, INC., Defendant-Appellee.

No. 90-1013.

United States Court of Appeals Federal Circuit.

Dec. 13, 1990.

James W. Geriak, Lyon & Lyon, Los Angeles, Cal., argued for plaintiff-appellant. With him on the brief was Paul H. Meier. Also on the brief was Thomas J. Morgan, Lyon & Lyon, Washington, D.C.

John D. Foley, Morgan & Finnegan, New York City, argued for defendant-appellee. With him on the brief were Warren H. Rotert, Christopher E. Chalsen and Karl M. Zielaznicki. Also on the brief was Renate A. Coombs, Shanley & Fisher, Morristown, N.J., of counsel.

Before NIES, Chief Judge, ^* PLAGER, Circuit Judge, and WILL, Senior District Judge. ^**

NIES, Chief Judge.

Becton Dickinson and Company (BD), appeals the final decision of the United States District Court for the District of New Jersey, Becton Dickinson and Co. v. C.R. Bard, Inc., 719 F.Supp. 1228, 12 USPQ2d 1678 (D.N.J.1989), (Wolin, J.), granting summary judgment in favor of C.R. Bard, Inc. on a charge of infringement of all claims of BD's United States Patent No. 3,789,841 ('841). We affirm.

I

The '841 patent relates to guide wires for use in treating blocked arteries through a technique known as the Seldinger catheterization procedure. In performing the Seldinger procedure, a physician directs a guide wire to the occluded area of the artery or arterial branch, "[slides] a balloon catheter over the guide wire to the site of the blockage, withdraws the guide wire and expands the balloon in order to expand the artery." Becton Dickinson, 719 F.Supp. at 1230, 12 USPQ2d at 1679. The invention of the '841 patent represents an improvement in this art. ¹

The '841 patent contains ten claims, all of which are asserted in this suit: independent claim 1, claims 2-5 which are dependent on claim 1, independent claim 6, independent claim 7, and claims 8-10 which are dependent on claim 7. During the course of pretrial proceedings, Bard filed three separate motions for summary judgment on the grounds of, respectively, unenforceability due to inequitable conduct, invalidity of all claims for obviousness, and noninfringement of all claims. The district court ruled on all three motions in the above cited opinion. The court held that a genuine issue as to the patentee's wrongful intent precluded a grant of summary judgment of unenforceability due to inequitable conduct. The court also held that a genuine issue of fact precluded summary judgment on the issue of obviousness of claim 1 and all claims dependent thereon. With respect to claims 6 and 7, the court stated that "claims 6 and 7, if viewed as the independent claims that they purport to be, are invalid for obviousness under 35 U.S.C. Sec. 103." Becton Dickinson, 719 F.Supp. at 1243, 12 USPQ2d at 1690. However, the court then explained that if claims 6 and 7 were rewritten as dependent on claim 1, summary judgment of invalidity could not be granted. Finally, with respect to claim 1 and all claims dependent thereon, including the court-drafted dependent claims 6 and 7, the court held that Bard was entitled to summary judgment of noninfringement.

Following issuance of its opinion, the district court ordered entry of its judgment which reads, in its entirety, as follows:

For the reasons set forth in the opinion of the Court filed herewith,

It is on this 28th day of July, 1989,

ORDERED that summary judgment is granted in favor of defendant C.R. Bard, Inc. and against Becton Dickinson and Company.

Becton Dickinson, 719 F.Supp. at 1249, 12 USPQ2d at 1695.

In its appeal, BD argues that the district court's grant of summary judgment rests solely on the ground of noninfringement of claims 1-10, and it advances various reasons for reversal. Principally, it argues that the district court misinterpreted various words in the claims and, with respect to claims 6 and 7, that the court erroneously imported limitations from claim 1 in finding no infringement and that the court made no finding on infringement of claims 6 and 7 as independent claims. Lastly, BD treats the district court's statements with respect to the invalidity of independent claims 6 and 7, in effect, as dicta not reflected in the judgment and urges that no validity issues are before us.

Bard maintains that the district court properly interpreted claim 1 in finding no infringement and urges that we uphold the judgment on the grounds of noninfringement with respect to claims 1-5. Bard agrees that the district court made no finding of infringement of claims 6 and 7 as independent claims. However, Bard asserts that the court's judgment rested on its determination that, as independent claims, claims 6 and 7 were invalid for obviousness. Bard argues further that BD, having failed to challenge the district court's invalidity rulings in its main brief, has waived review of that part of the court's judgment. Alternatively, Bard urges affirmance of the judgment on the ground of the invalidity of claims 6-10, even if the district court's judgment did not rest on invalidity, because Bard raised the issue below in its motion for summary judgment and the record supports its position. Bard further asserts that BD did not argue in its reply to Bard's motion for summary judgment that dependent claims 8-10 were valid even if independent claim 7 were to be held invalid and, thus, the validity of claims 8-10 has never been a separate issue in this case.

Issues

1. Did the district court properly grant summary judgment of noninfringement as to any claims?

2. Did the district court's judgment encompass its holding of the invalidity of independent claims 6 and 7?

3. Did BD waive review of the issues of invalidity?

II Summary Judgment Standard

As in other cases, the grant of summary judgment under Fed.R.Civ.P. 56, ² is appropriate in a patent case where no genuine issue of material fact exists and the movant is entitled to judgment as a matter of law. See Barmag Barmer Maschinenfabrik AG v. Murata Machinery, Ltd., 731 F.2d 831, 835, 221 USPQ 561, 564 (Fed.Cir.1984) (summary judgment of invalidity); Townsend Eng'g Co. v. HiTec Co., 829 F.2d 1086, 1089, 4 USPQ2d 1136, 1138 (Fed.Cir.1987) (summary judgment of noninfringement). As the Supreme Court explained in Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 2510, 91 L.Ed.2d 202 (1986), "[T]he substantive law will identify which facts are material.... [and a fact will be considered genuinely disputed] if the evidence is such that a reasonable jury could return a verdict for the nonmoving party."

III Noninfringement of Claim 1

To establish infringement of a patent, every limitation set forth in a claim must be found in an accused product or process exactly or by a substantial equivalent. Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1259, 9 USPQ2d 1962, 1967 (Fed.Cir.1989). Determination of patent infringement is a two-step process: "the meaning of the claims must be learned from a study of all relevant patent documents; and the claims must be applied to the accused structures." Caterpillar Tractor Co. v. Berco, S.P.A., 714 F.2d 1110, 1114, 219 USPQ 185, 187 (Fed.Cir.1983). Except where evidence pertinent to a claim's interpretation creates a factual dispute, "claim interpretation may be resolved as an issue of law by the court on summary judgment...." Johnston v. IVAC Corp., 885 F.2d 1574, 1580, 12 USPQ2d 1382, 1386 (Fed.Cir.1989).

The components of the guide wires of the '841 invention are described in terms of having a proximal end, the end of the guide wire closer to the doctor during its use, and a distal end, the end of the guide wire further from the doctor during use. Specifically, claim 1 of the '841 patent reads:

(1) A flexible guide wire, comprising:

(2) an elongated inner core wire having a proximal portion and a distal portion;

(3) a coil spring enclosing the distal portion and fixably attached thereto the coil spring including a proximal end and distal end; and

(4) a plastic jacket enclosing and engaging the proximal portion the jacket including a proximal end and a distal end, the jacket distal end terminating at the coil spring proximal end and being substantially equal in diameter to the coil spring such that the jacket forms an extension of the coil spring. (Emphasis added.)

The dispute centers on paragraph numbered 4 above and, more particularly, on the district court's interpretation of the limitations with respect to the plastic jacket "terminating at" the proximal end of the coil spring, "being substantially equal in diameter to" the coil spring and "form[ing] an extension" thereof. The accused guide wires are coated with a thin (maximum .0004 inches) discontinuous coating of Teflon primer paint which is sprayed over the entire guide wire. The district court found no genuine issue of fact in determining that the Bard guide wires do not meet the limitations respecting the plastic jacket either literally or equivalently. Accordingly, the district court held that Bard was entitled to judgment of noninfringement of claim 1 and all claims dependent thereon as a matter of law.

Literal Infringement

BD devotes the principal portion of its brief to asserted error in the district court's claim interpretation which, per BD, resulted in erroneous rulings of no literal infringement. While it may be debatable whether or not Bard's device satisfies the limitations that the plastic jacket "encloses" and "engages" the core wire and whether or not the Teflon coating is a "jacket" which the district court construed favorably to BD, there can be no dispute that the Bard device has no "plastic jacket.... terminating at the coil spring proximal end...." (emphasis added). As indicated, the Bard device is covered by a Teflon coating which extends without a break over the core and the coil spring.

BD argues that the Teflon coating over the coil spring in Bard's device should be...