Cordis Corp.. v. Boston Scientific Corp..

• Decision Date: 28 September 2011
• Docket Number: 2010–1316.,Nos. 2010–1311,s. 2010–1311
• Parties: CORDIS CORPORATION, Plaintiff–Appellant,v.BOSTON SCIENTIFIC CORPORATION and Boston Scientific Scimed, Inc. (formerly known as Scimed Life Systems, Inc.), Defendants–Cross Appellants.
• Court: U.S. Court of Appeals — Federal Circuit

658 F.3d 1347

100 U.S.P.Q.2d 1329

CORDIS CORPORATION, Plaintiff–Appellant,

v.BOSTON SCIENTIFIC CORPORATION and Boston Scientific Scimed, Inc. (formerly known as Scimed Life Systems, Inc.), Defendants–Cross Appellants.

Nos. 2010–1311

2010–1316.

United States Court of Appeals, Federal Circuit.

Sept. 28, 2011.

Gregory L. Diskant, Patterson Belknap Webb & Tyler LLP, of New York, NY, argued for plaintiff-appellant. With him on the brief were Eugene M. Gelernter, Scott B. Howard, Irena Royzman, Charles D. Hoffmann.Frank P. Porcelli, Fish & Richardson P.C., of Boston, MA, argued for defendants-cross appellants. With him on the brief were Lauren A. Degnan and Cherylyn Esoy Mizzo, of Washington, DC.Before BRYSON, MAYER, and GAJARSA ^*, Circuit Judges.GAJARSA, Circuit Judge.

Cordis Corporation (“Cordis”) appeals the United States District Court for the District of Delaware's grant of judgment as a matter of law (“JMOL”) that Boston Scientific Corporation and Boston Scientific Scimed, Inc. (collectively, “BSC”) do not literally infringe claim 25 of U.S. Patent No. 5,879,370. Cordis also appeals the district court's denial of JMOL on the issue of noninfringement by the reverse doctrine of equivalents. BSC cross-appeals the district court's judgment that U.S. Patent Nos. 5,643,312 (the “'312 patent”) and 5,879,370 (the “'370 patent”) are not unenforceable due to inequitable conduct. For the reasons stated below, we affirm.

Background

This dispute relates to balloon-expandable stents, devices which are used to treat occluded blood vessels. We have previously summarized the importance of such stents:

The development of balloon-expandable coronary stents marked a significant advance in the treatment of coronary artery disease by providing an alternative to balloon angioplasty and bypass surgery. In balloon angioplasty, an inflated balloon crushes built-up plaque against the arterial wall to improve blood flow. The balloon is withdrawn at the end of the procedure, however, which allows the artery to close again over time. A stent of the sort disclosed in the patents at issue in this case is mounted on an angioplasty balloon and is forced to expand against the arterial walls when the balloon is inflated. When the balloon is deflated and withdrawn, the stent retains its shape and remains in the artery to keep it open.

Cordis Corp. v. Medtronic AVE, Inc., 339 F.3d 1352, 1354–55 (Fed.Cir.2003). Both of the patents at issue are directed to, inter alia, stents having undulating longitudinal sections.

On February 25, 1994, Robert E. Fischell and two of his sons, David R. Fischell and Tim A. Fischell, filed U.S. Patent Application No. 08/202,128 (the “'128 application”), which ultimately issued as the '312 patent. For the first two years after the '128 application was filed, Robert Fischell prosecuted the application pro se. He did, however, retain an attorney, Morton J. Rosenberg, to prosecute foreign counterparts.¹

On July 17, 1995, Mr. Rosenberg forwarded to Robert Fischell a “Search Report from the European Patent Office” (“EPO Search Report”) regarding a European counterpart to the '128 application. The EPO Search Report identified six references, and categorized them according to relevance. Category “X” documents were “particularly relevant if taken alone,” category “Y” documents were “particularly relevant if combined with another document of the same category,” and category “A” documents were “technological background.” J.A. 11523. Only one reference, European Patent Application 566807 (“Sgro”), was identified as a category X reference. In an accompanying letter, Mr. Rosenberg explained:

the only reference which is stated as being particularly relevant to Claim 1 is European Patent Application # 566807 whose inventor is Jean–Claude Sgro. We have made a Patentee Search to determine whether we have any corresponding Patent in the United States but have come up negatively. It may pay us to make a translation from the French to determine if this is relevant.

J.A. 11946.

As in the original '128 application, the only claim in the European application that mentioned undulating longitudinals was claim 8. The EPO Search Report identified four “Y” references as being relevant to that claim. Among the references so identified was U.S. Patent No. 4,856,516 (“Hillstead”), a patent directed to, inter alia,

[a] stent for reinforcing a vessel within a subject comprising a cylindrical support dimensioned to fit within an interior of said vessel constructed from an elongated wire bent to define a series of relatively tightly spaced convolutions or bends, said wire also bent in the form of a plurality of loops....

Hillstead, col.4 ll.37–42 (emphasis added). Figure 2A from Hillstead, also displayed on the cover page of that patent, is reproduced below, along with Figure 8 from the '312 patent for comparison.

Image 1 (3.33" X 4.47") Available for Offline Print

In the course of this case, Mr. Rosenberg testified it was his practice to “carefully” review the “X” references in EPO search reports, i.e., those that—like Sgro—are “particularly relevant if taken alone.” Cordis Corp. v. Boston Scientific Corp., 641 F.Supp.2d 353, 355–56 (D.Del.2009) ( “ Cordis III ”). But his practice was to “just scan” “Y” references, i.e., those that—like Hillstead—are “particularly relevant if combined with another document of the same category.” Id. Similarly, Robert Fischell testified it was his practice to “look at the pictures and see if the pictures [in the references] look like the invention, the inventive concept for which we're trying to get claims.” Bench Trial Tr. 846:1–17; see also Bench Trial Tr. 845:10–16, 852:7–24. Nevertheless, both Mr. Rosenberg and Robert Fischell testified that they did not recall looking at Hillstead until April 1998, even though it was identified in the EPO Search Report and both had retained copies of Hillstead in their files since at least July 1995. Not surprisingly, Hillstead was never disclosed to the U.S. Patent and Trademark Office in the course of the '312 patent's prosecution, despite multiple amendments adding limitations regarding undulations and the importance given those undulations in distinguishing various prior art references.²

Just prior to the July 1, 1997, issuance of the '312 patent, the Fischells filed U.S. Patent Application 08/864,221 (“the '221 application”) as a continuation of the '128 application. Robert Fischell was thereafter shown a copy of Hillstead during a meeting with Cordis's counsel.³ Robert Fischell testified that this meeting—apparently in April 1998—was the first time he specifically recalled seeing Hillstead.

In May 1998, an information disclosure statement (“IDS”) regarding the '221 application was filed with the Patent and Trademark Office. The IDS cited forty-one U.S. patents, seven foreign patent documents, and thirteen articles. Hillstead, along with the other three “Y” references from the EPO Search Report, was included in the disclosure. Among the seventy references ultimately identified, Hillstead was never emphasized as being of particular interest. The '221 application subsequently issued as the '370 patent, with Hillstead among the “References Cited” on the face of the patent.

The present litigation began on October 3, 1997, when Cordis filed suit against Medtronic AVE, Inc., BSC, and Scimed Life Systems, Inc. As relevant to this appeal, Cordis ultimately accused BSC's NIR stent of infringing the ' 312 and '370 patents. Following a multi-week trial, a jury found that BSC's NIR stent does not literally infringe claim 21 of the '312 patent, and claim 21 is not invalid for obviousness or lack of written description. Cordis Corp. v. Medtronic AVE, Inc., 194 F.Supp.2d 323, 339 (D.Del.2002) ( “ Cordis I ”). It also found that the NIR stent literally infringes claims 25 and 26 of the '370 patent, but no infringement of either claim by virtue of the reverse doctrine of equivalents. Id. Moreover, it determined that claim 25 of the '370 patent is not invalid for lack of written description, but claim 26 of the '370 patent is invalid for lack of written description. Id.

Both parties moved for JMOL. The district court granted BSC's motion for JMOL that the NIR stent does not literally infringe claims 25 and 26 of the '370 patent. Id. at 354. Consequently, Cordis's motion for JMOL on the reverse doctrine of equivalents was denied as moot. Id. BSC's motion for JMOL that claim 25 of the '370 patent and claim 21 of the '312 patent are invalid for lack of written description was also denied. Id. at 354–55.

Following the jury trial, the district court conducted a four-day bench trial on the issue of unenforceability due to inequitable conduct. BSC contended that the patentees failed to disclose Hillstead during the prosecution of the ' 312 patent, and the patentees knew, or should have known, that Hillstead would be material to the examiner's consideration of patentability. Id. at 362. After making findings of fact, the district court concluded BSC proved “by clear and convincing evidence the threshold levels of materiality and intent with respect to nondisclosure of the Hillstead patent” during the prosecution of the '312 patent. Id. at 367. The court found “[t]he patentees purposefully neglected their responsibility of candor to the PTO by ‘putting their heads in the sand’ regarding prior art related to [undulating longitudinals].” Id. The court then concluded that the '370 patent's prosecution was tainted by the lack of candor in the '312 prosecution because, when the patentees finally disclosed Hillstead, they did so in the midst of numerous other references and without identifying it as being of particular interest. Id. at 368. The district court therefore held both patents unenforceable due to inequitable conduct. Id.

Both parties appealed. Cordis challenged the portions of the judgment relating to literal infringement, the reverse doctrine of equivalents, and...