Cordis Corp. v. Medtronic Ave, Inc.
| Decision Date | 12 August 2003 |
| Docket Number | No. 02-1482.,No. 02-1458.,No. 02-1481.,No. 02-1457.,02-1457.,02-1458.,02-1481.,02-1482. |
| Citation | 339 F.3d 1352 |
| Parties | CORDIS CORPORATION, Plaintiff-Appellant, v. MEDTRONIC AVE, INC., Defendant-Cross Appellant, and Boston Scientific Corporation and Scimed Life Systems, Inc., Defendants. Medtronic Ave, Inc., Plaintiff-Cross Appellant, and Arterial Vascular Engineering, Inc., Counterclaim Defendant-Appellee, v. Cordis Corporation, Defendant/Counterclaimant-Appellant, and Johnson and Johnson and Expandable Grafts Partnership, Defendants. |
| Court | U.S. Court of Appeals — Federal Circuit |
Gregory L. Diskant, Patterson, Belknap, Webb & Tyler LLP, of New York, NY, argued for plaintiff-appellant Cordis Corporation. With him on the brief were Eugene M. Gelernter, William F. Cavanaugh, Jr., and Michael J. Timmons.
Raphael V. Lupo, McDermott Will & Emery, of Washington, DC, argued for defendant-cross appellant Medtronic Ave, Inc., and counterclaim defendant-appellee Arterial Vascular Engineering, Inc. With him on the brief were Donna M. Tanguay, Mark G. Davis, and Natalia V. Blinkova. Of counsel on the brief were D. Michael Underhill, Richard S. Meyer, Eric J. Maurer, and Gerald P. Konkel, Morgan Lewis & Bockius LLP, of Washington, DC.
George E. Badenoch, Kenyon & Kenyon, of New York, NY, for amicus curiae Boston Scientific Corporation, Scimed Life Systems, Inc, and Medinol Ltd. With him on the brief was Charles R. Brainard.
Before NEWMAN, BRYSON, and GAJARSA, Circuit Judges.
Cordis Corporation appeals from a final judgment of the United States District Court for the District of Delaware. Cordis seeks review of (1) a summary judgment that defendant Medtronic AVE, Inc., ("AVE") did not literally infringe two of Cordis's patents, and (2) a judgment as a matter of law ("JMOL") that AVE did not infringe those patents under the doctrine of equivalents. Because we disagree with the district court's claim construction and its application of prosecution history estoppel, we reverse the judgment and remand for further proceedings.
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 The balloon is withdrawn at the end of the procedure, however, which allows the artery to close again over time.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. Because the stent's diameter depends on how much the balloon expands, the stent can be used in arteries of differing diameters. Prior art stents that were designed to remain in arteries had predetermined expanded diameters. Accordingly, they were liable to migrate from the desired location if they were too small or to rupture the artery if they were too large.
The two patents at issue in this case are owned by Cordis. U.S. Patent No. 4,739,762 ("the '762 patent") discloses an expandable stent composed of a tubular member having a wall surface of substantially uniform thickness with "a plurality of slots formed therein" parallel to the longitudinal axis of the tubular member. After the stent is transported in its unexpanded form to the intended location within the patient's body, an outwardly directed radial force (as by the inflation of the balloon) causes the stent to expand. The stent can be expanded and deformed according to the diameter of the body passageway in which it is located. See '762 patent, col. 3, ll. 33-51. Certain claims of the '762 patent specify that the tubular member is "thin-walled" and "smooth."
Approximately ten years after issuing the '762 patent, the PTO reexamined the patent in light of several prior art references. During the reexamination, the examiner rejected several claims in view of, inter alia, U.S. patents to Ersek and to Kornberg. The Ersek patent claims a fixation device with projecting edges that can be used as a substitute for sutures; the device serves to hold a prosthesis in place within a body passageway. Ersek recites that his device is preferably formed from expanded metal sheeting and is produced by forming a series of staggered parallel slits in a metal sheet and then stretching the sheet in a direction perpendicular to the slits to open the slits into apertures. The resulting projecting edges embed themselves into the tissue wall upon expansion of the sleeve.
In response to the examiner's rejection, Cordis amended various claims of the '762 patent to include the "substantially uniform thickness" limitation that was already present in claim 23. Cordis argued that the limitation distinguished its patent from the Ersek patent, noting that "[t]he expanded metal Ersek sleeve has bridge portions that are several times as thick as the strands." In its discussion of the Ersek patent, Cordis relied in part on an affidavit of Dr. Erik Antonsson that addressed the dimensions of a model of the Ersek device. Cordis also distinguished the Ersek patent based on its contention that Ersek did not disclose either a "smooth" surface or a "thin-walled" tubular member. The examiner then confirmed the claims of the '762 patent that are asserted in this case. The examiner distinguished the Ersek patent on the ground that the Ersek sleeve is not smooth because "the bridge has a thickness which is twice as great as the strand."
The other Cordis patent at issue in this case is U.S. Patent No. 5,195,984 ("the '984 patent"). That patent adds the feature of flexibility by including a connector member to link one tubular member of the stent to another. The written description provides that the claimed device, with its connector member, "permits tissue of an elongated section of a body passageway to be supported by an elongated graft; and provides the necessary flexibility to negotiate the bends and curves in tortuous body passageways, such as the vascular system." '984 patent, col. 4, ll. 20-25. The examiner initially rejected claims of the '984 patent as anticipated by or obvious in light of a U.S. patent to Wiktor. After the applicant distinguished the Wiktor patent, the examiner allowed the claims without amendment. The '984 patent is unrelated to the '762 patent, but the written descriptions of the two are very similar.
Cordis filed suit, charging AVE and others with patent infringement. AVE produces stents that are formed by first bending wire rings into a sinusoidal shapes and then connecting the bent rings together, as shown below.
Cordis alleged, inter alia, that AVE's stents infringe claims 23, 51, and 54 of the '762 patent and claims 1 and 3 of the '984 patent. All of the asserted claims recite a "wall surface having a substantially uniform thickness and a plurality of slots formed therein."
The district court construed the claim language referring to a "plurality of slots formed [in the wall surface]" to be limited to devices in which the slots are formed by the removal of material. No material is removed from a pre-existing wall to form the slots in AVE's accused stents; rather, the slots are formed when wire-like material is bent into sinusoidal rings, which are then connected in line. Because the court concluded that the accused products did not satisfy the "plurality of slots formed therein" limitation, the court granted AVE's motion for summary judgment of no literal infringement.
The district court construed the reference to a "wall surface having a substantially uniform thickness" to mean that the thickness of the wall may not vary by more than 0.001 inch. The court reached that conclusion based on the patentee's citation, during reexamination, of the Antonsson affidavit, which reported that the wall of a device modeled on the Ersek patent was between 0.0035 inches and 0.0045 inches in thickness.
After a two-week trial, a jury found that AVE's stents infringed the asserted claims of the '762 and '984 patents under the doctrine of equivalents and awarded Cordis $271 million in damages. On post-trial motions, however, the district court granted JMOL of noninfringement, holding that Cordis was barred from asserting that AVE's stents had features that were equivalent to the "plurality of slots formed therein" and "substantially uniform thickness" limitations. In addition, the court granted a conditional new trial with respect to literal infringement of the "substantially uniform thickness" limitation.
With regard to the grant of summary judgment of no literal infringement, the district court ruled that the phrase "slots formed therein" requires that the slots be manufactured by removing material from a pre-existing wall surface. We disagree. Slots can be "formed" in a wall surface by means other than removing material, such as by constructing the wall with openings built into it.
Nothing about the phrase "slots formed therein" suggests that the slots must be formed by a particular process; the phrase certainly does not indicate that the wall must be formed first and the slots formed later. A piece of wire mesh can fairly be described as a metal surface with holes formed in it, but that description does not mean that the screen was made by starting with a solid piece of metal and drilling holes in it. The phrase "slots formed therein" describes the physical characteristics of the product, not the method of its manufacture.
We also reject AVE's contention that the '762 patent's definition of a slot as an "opening" indicates that the...
To continue reading
Request your trial
-
Volterra Semiconductor Corp. v. Primarion, Inc.
...required to describe in the specification every conceivable and possible future embodiment of his invention.” Cordis Corp. v. Medtronic AVE, Inc. 339 F.3d 1352, 1365 (Fed.Cir.2003) (quoting Rexnord Corp. v. Laitram Corp., 274 F.3d 1336, 1344 (Fed.Cir.2001)). Thus, “[a] specification may, wi......
-
McNeil-Ppc, Inc. v. Perrigo Co., 05 Civ. 1321(WHP).
...evidence. See, e.g., Playtex Prods., Inc. v. Procter & Gamble Co., 400 F.3d 901, 908 (Fed.Cir. 2005); Cordis Corp. v. Medtronic Ave, Inc., 339 F.3d 1352, 1359-62 (Fed.Cir. 2003). Here, there is no incontrovertible evidence that McNeil disavowed the two-layer embodiment during the prosecutio......
-
Move, Inc. v. Real Estate Alliance Ltd.
...convincing evidence. SeeAlcon Research Ltd. v. Barr Labs., Inc. , 745 F.3d 1180, 1188 (Fed. Cir. 2014) ; Cordis Corp. v. Medtronic AVE, Inc. , 339 F.3d 1352, 1364 (Fed. Cir. 2003).Move contends that the '989 Patent fails the possession requirement because it claims all methods for selecting......
-
Akamai Techs., Inc. v. Limelight Networks, Inc.
...or more of the required steps”); Cordis Corp. v. Medtronic AVE, Inc., 194 F.Supp.2d 323, 350 (D.Del.2002), rev'd on other grounds, 339 F.3d 1352(Fed.Cir.2003) (finding sufficient evidence to support finding that there was “some connection” between two parties jointly performing method claim......