Hess v. Advanced Cardiovascular Systems, Inc.
| Decision Date | 18 February 1997 |
| Docket Number | No. 96-1066,96-1066 |
| Citation | 106 F.3d 976,41 USPQ2d 1782 |
| Parties | Robert L. HESS, Plaintiff-Appellant, v. ADVANCED CARDIOVASCULAR SYSTEMS, INC., Defendant-Appellee. ADVANCED CARDIOVASCULAR SYSTEMS, INC., Plaintiff/Cross-Complainant Defendant-Appellee, v. SCIMED LIFE SYSTEMS, INC., Defendant, and Robert L. Hess, Cross-Complainant/Appellant. |
| Court | U.S. Court of Appeals — Federal Circuit |
Keith V. Rockey, Dressler, Rockey, Milnamow & Katz, Ltd., Chicago, IL, argued for plaintiff-appellant and cross-complainant/appellant. With him on the brief was Kathleen A. Lyons.
Craig B. Bailey, Fulwider Patton Lee & Utecht, Los Angeles, CA, argued for defendant-appellee and plaintiff/cross-complainant defendant-appellee. With him on the brief were Richard A. Bardin and Paul M. Stull. Of counsel on the brief was Mark B. Mondry Before NEWMAN, Circuit Judge, FRIEDMAN, Senior Circuit Judge, and MICHEL, Circuit Judge.
Advanced Cardiovascular Systems, Inc., Santa Clara, CA.
This appeal challenges the decision of the United States District Court for the Northern District of California that the materials and suggestions the appellant Robert L. Hess provided to the listed inventors of a patent did not make him a co-inventor of the patented device. We affirm.
A. United States Patent No. 4,323,071 (the '071 patent), which listed Drs. John B. Simpson and Edward W. Robert as the inventors, covers a balloon angioplasty catheter that is inserted into a patient's artery which has a partial blockage, or stenosis. The balloon, fitted to the catheter, is inflated by forcing a radiographic fluid into it under pressure; the resulting expansion of the balloon eliminates or reduces the blockage of the artery.
While developing the catheter, Drs. Simpson and Robert were postdoctoral Cardiology Fellows at Stanford University Medical Center. A Swiss physician, Dr. Gruntzig, had pioneered the development of balloon angioplasty. After hearing Dr. Gruntzig speak at a cardiology conference at Stanford in March 1977 and later meeting him, Dr. Simpson spent time with Dr. Gruntzig in Europe, observing him perform balloon angioplasty procedures.
Upon returning to the United States Dr. Simpson discovered that Gruntzig catheters, made only in Switzerland, were in short supply. Drs. Simpson and Robert then decided to construct their own catheter. They had not examined the Gruntzig catheter in detail, but knew it had a balloon mounted on a shaft.
In attempting to find a material from which a balloon could be made, the doctors first experimented with a plastic called polyvinylchloride, which was ineffective, and next tried Teflon tubing, which produced unsatisfactory balloons. One of their Stanford colleagues (Bill Sanders) then referred them to the appellant Mr. Hess, an engineer at Raychem Corporation. At that time Mr. Hess was a technical liaison between Raychem's domestic and foreign operations; prior to that he had headed a business development group. Sanders made the suggestion because Raychem was one of the largest manufacturers of heat shrinkable materials and "might have some material" with which they could work.
The doctors told Mr. Hess, who had no previous experience with angioplasty, about the Gruntzig catheter. They stated they "wanted to ... build a catheter ... that incorporated a balloon on the end of a shaft." They explained what they were attempting to do, the problems they had encountered in finding a suitable material for the balloon, and that they were looking for a new material. They stated that the materials they had tried did not enable them properly to control balloon expansion.
Mr. Hess suggested that the doctors try Raychem's heat shrinkable irradiated modified polyolefin tubing and demonstrated how such a material could be used to form a balloon by heating the tubing above its crystalline melting point, applying pressure, and then cooling the material. Mr. Hess also suggested the use of an adhesive-free seal to attach the balloon to the catheter. He described how one end of the tubing could be shrunk fit onto the central shaft of the catheter without the use of any potentially-toxic adhesive chemicals. Mr. Hess stated that "the basic principles which I taught them"--involving heating the tubing "above its crystalline melting point, expanding it while it remains heated using internal pressure and then cooling it in its expanded state while your [sic] maintaining the pressure"--were "in various published textbooks and the like" and "was a generally known process to a number of companies."
Mr. Hess provided "multiple samples of ... tubing," with which the doctors "experimented." At that meeting and in further discussions with the doctors, Mr. Hess also Using that tubing, Drs. Simpson and Robert then developed and built their catheter. They had "difficulty ... developing the ... catheter" and spent "hours and days trying to configure this system to make it work," including "experimentation ... with the tubing" Mr. Hess "gave" them. The two doctors worked on the catheter "virtually every day [for] four or five hours or more." The doctors finally developed the balloon using a technique called free-blowing, a technique which Mr. Hess admittedly did not suggest. Pursuant to Mr. Hess's suggestion, the doctors attempted to avoid the use of adhesives and shrink fit the balloon to the catheter shaft, but they encountered leakage problems. Without Mr. Hess's assistance and after further experimentation, the doctors ultimately developed an acceptable adhesive-free seal. Mr. Hess did not participate in the day-to-day experimentation.
suggested "approaches to construction of the catheter" using the Raychem tubing.
The doctors applied for a patent on their catheter in April, 1978 and the '071 patent issued with twenty-one claims (the "original claims") in April, 1982. The two inventors organized the appellee company Advanced Cardiovascular Systems, Inc. (ACS), to which they assigned the '071 patent, and began manufacturing and selling the catheter. An ACS officer stated that the "catheter gained widespread success in the marketplace, and sales of the product grew rapidly," and that the Simpson-Robert catheter "was profitable" to ACS. Raychem supplied ACS with tubing for manufacturing the catheters.
B. In 1987, ACS sued SciMed Life Systems, Inc. (SciMed) in the United States District Court for the District of Minnesota for infringement of the '071 patent. The district court granted SciMed's motion for summary judgment of non-infringement, based on its interpretation of the claims. This court, however, vacated and remanded, rejecting the district court's claim interpretation. Advanced Cardiovascular Sys., Inc. v. Scimed Life Sys., Inc., 887 F.2d 1070, 12 USPQ2d 1539 (Fed.Cir.1989).
The question of Mr. Hess's alleged co-inventorship apparently first arose when in its answer SciMed asserted, as one ground for challenging the validity of the patent, that there was a "failure of the patentees to join Hess as a co-patentee." In a declaration Mr. Hess executed in 1988, which SciMed filed in the patent infringement case, he described the aid he had given to Drs. Simpson and Robert in connection with the development of their catheter. In a 1990 affidavit, he repeated those statements and asserted that he "made substantive contributions to the subject matter disclosed" in the '071 patent and "should be named as a co-inventor thereof."
In September, 1987, ACS requested reexamination of certain claims in the '071 patent. In May 1990, the Patent and Trademark Office issued a reexamination certificate, which upheld the original claims and added claims 22-52 (the "reexamination claims").
In the summer of 1990, Mr. Hess intervened in the ACS-SciMed suit to file a cross-complaint against ACS seeking a declaration that he was a joint inventor of the catheter the '071 patent covered and seeking correction of the patent to reflect his status. The district court dismissed Mr. Hess's cross-complaint for failing to state a claim on which relief could be granted because the complaint was barred by laches. This court vacated the dismissal and remanded, holding that there were disputed issues of material fact with respect to laches that precluded dismissal. Advanced Cardiovascular Sys., Inc. v. SciMed Life Sys., Inc., 988 F.2d 1157, 26 USPQ2d 1038 (Fed.Cir.1993).
While that appeal was pending, Mr. Hess filed suit in United States District Court for the Northern District of California against ACS, alleging that he was a co-inventor of the catheter the reexamination claims covered.
On the eve of trial ACS and SciMed settled their infringement suit. The Minnesota District Court then transferred to the Northern District of California Court the remaining portion of the case, which was Mr. Hess's cross-complaint asserting his co-inventorship of the catheter the '071 patent covers. The California District Court consolidated the two cases.
The California District Court granted summary judgment that Mr. Hess's claim of co- After a bench trial, the district court held that the evidence did not establish Mr. Hess's claim of co-inventorship of the catheter the reexamination claims covered. Ruling from the bench, the court determined that Mr. Hess was required to prove co-inventorship by clear and convincing evidence. The court stated:
inventorship of the catheter the original claims covered was barred by laches, and set for trial the co-ownership issue with respect to the reexamination claims.
[A]ll that Mr. Hess needs to establish is that he conceived some important element or some important claim that is claimed in the patent....
....
... I don't think it's necessary for Mr. Hess to conceive of every feature of the catheter, but that he have some conceptual role in at least an important or a necessary element, or important and necessary claim.
The court noted:
[I]nventors can obtain the services and ideas and...
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