Koninklijke Philips Elec. N.V. v. Cardiac Science
| Decision Date | 05 January 2010 |
| Docket Number | No. 2009-1241.,2009-1241. |
| Citation | 590 F.3d 1326 |
| Parties | KONINKLIJKE PHILIPS ELECTRONICS N.V., Plaintiff-Appellant, v. CARDIAC SCIENCE OPERATING COMPANY, Defendant-Appellee. |
| Court | U.S. Court of Appeals — Federal Circuit |
J. Michael Jakes, Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., of Washington, DC, argued for plaintiff-appellant. With him on the brief were James F. Sherwood; and Lily Lim, of Palo Alto, CA.
Eric H. Chadwick, Patterson, Thuente, Skaar & Christensen, P.A., of Minneapolis, MN, argued for defendant-appellee. With him on the brief was Aaron W. Davis.
Before MICHEL, Chief Judge, FRIEDMAN, and GAJARSA, Circuit Judges.
Koninklijke Philips Electronics N.V. ("Philips") appeals from the United States District Court for the Western District of Washington's sua sponte dismissal of Philips' civil suit against Cardiac Science Operating Co. ("Cardiac Science"). Pursuant to 35 U.S.C. § 146, Philips sought review in the district court of the Board of Patent Appeals and Interferences' (the "Board") interference decision. Philips timely appealed the district court's order dismissing Philips' complaint with prejudice. We reverse and remand with instructions as outlined below.
Philips is the assignee of U.S. Patent No. 6,241,751 (the "'751 patent"). The '751 patent discloses a cardiac defibrillator that delivers electrical shocks to a patient's heart during ventricular fibrillation. Carlton B. Morgan and three other engineers invented the defibrillator and applied for a patent on April 22, 1999. '751 patent at [22]. The inventors obtained a patent for the defibrillator on June 5, 2001, assigning their interest to Agilent Technologies, Inc., Philips' predecessor in interest. Id. at [45], [73]. The '751 patent is an improvement patent on a previous cardiac defibrillator, U.S. Patent No. 5,749,904 (the "Gliner patent").
According to Philips, the '751 patent discloses a defibrillator that delivers electrical shock based on two parameters. First, the defibrillator uses multiple capacitor configurations to measure a patient's transthoracic impedance. Id. at col.1 ll.39-45; col.2 ll.53-64. The patent uses the term transthoracic impedance or patient impedance to mean the electrical impedance of the thoracic tissues, including the heart, as measured between the defibrillator's electrodes. Second, the defibrillator uses the capacitors to deliver varying energy levels measured in joules that an operator can select for delivering electric shock. Id. at col.2 ll.53-64. In sum, the '751 patent discloses a defibrillator with a set of capacitors arranged according to both "patient impedance and desired energy level." Id. at [57].
On March 6, 1998, Cardiac Science filed a patent application for a multiple-capacitor cardiac defibrillator. Almost a year after the '751 patent issued, Cardiac Science filed a continuation application, No. 10/159,806 (the "Owen application"), on May 31, 2002. To provoke interference proceedings, Cardiac Science copied claims 1-37 of the '751 patent into the Owen application and claimed an earlier priority date.
The U.S. Patent and Trademark Office ("PTO") declared an interference under 35 U.S.C. § 135(a) between the Owen application and the '751 patent. The Board formulated one count for the interference, which it copied verbatim from claim 15 of the '751 patent and claim 15 of the Owen application. That count reads:
A method for delivering an impedance-compensated defibrillation pulse to a patient, comprising:
measuring a patient impedance of said patient;
selecting from a set of configurations in an energy storage capacitor network to deliver an impedance-compensated defibrillation pulse to said patient responsive to said patient impedance; and
delivering said impedance-compensated defibrillation pulse to said patient.
This lone count corresponds to '751 patent claims 1-37 and Owen application claims 1-9, 11-13, 15-18, 20-25, 27-30, 32-33, and 38-39. The term "impedance-compensated defibrillation pulse" from the count is at the center of the parties' dispute. Pursuant to its statutory mandate, the Board proceeded to "determine questions of priority of the inventions" disclosed in the '751 patent and the Owen application and "determine questions of patentability." 35 U.S.C. § 135(a) (2006).
During the interference proceedings, Philips filed five preliminary motions in an effort to terminate the proceedings. Three of those motions are relevant to this appeal and are presented below so as to track the Board's reasoning. Note, however, that the motions are not presented in numerical order.
In motion 4, Philips argued, inter alia, that the Owen application was not patentable because it failed to provide an adequate written description as required under § 112, ¶ 1. Philips asserted that the '751 patent narrowly defined the term "impedance-compensated defibrillation pulse" in its specification as corresponding to "an overall capacitance and charge voltage tailored to the patient impedance and the desired energy level." In contrast, Philips asserted that the Owen specification disclosed "configuring capacitors based only on patient impedance." Because Owen's specification failed to disclose desired energy level as an additional parameter for configuring capacitors, Philips argued that all of Owen's claims except for claim 38 were unpatentable for lack of written description. The Board rejected Philips' argument, opining that "Morgan[, the '751 patent inventor,] has [presented] no basis for construing Owen's claims in light of definitions contained in Morgan's specification." The Board explained that the '751 patent's written description was irrelevant to its analysis under the PTO's interference procedures. The Board cited one regulation in particular as authority to disregard the '751 patent in construing the claim term in the Owen application: "A claim shall be given its broadest reasonable construction in light of the application or patent in which it appears." 37 C.F.R. § 41.200(b) (2009) (emphasis added).
In motion 5,1 Philips filed a motion expressly contingent on the Board broadly interpreting the term "impedance-compensated defibrillation pulse" to include a capacitor configuration based only on patient impedance, but not based on desired energy level. If the Board so construed the term, Philips argued that Owen's claims 1-4, 13, 15, 20-22, and 39 were unpatentable because the Gliner patent anticipated the claims under § 102 or at least rendered the claims obvious under § 103. The Board dismissed Philips' contingent motion, explaining that the contingency upon which the motion relied never materialized because the Board had not interpreted the term "impedance-compensated defibrillation pulse."
In motion 2, Philips argued that Owen's claim 38 was unpatentable because the Gliner patent anticipated claim 38 as prior art under § 102 or because the Gliner patent rendered claim 38 obvious under § 103. The Board found it unnecessary to consider the patentability of Owen's claim 38, holding that Philips failed to establish that all of Owen's other claims were unpatentable in motion 4. As long as the Board found that the Owen application had priority over the '751 patent and that at least some of the claims were patentable, the Board opined that determining claim 38's patentability was "not essential for this interference." The Board assumed that the primary examiner could determine whether Owen's claim 38 was anticipated or obvious ex parte after the interference proceeding concluded.
After denying all of Philips' motions, the Board addressed the priority stage of the interference. The Board found in favor of the Owen application for priority and canceled the '751 patent claims 1-37. Philips then promptly filed suit in the United States District Court for the Western District of Washington under § 146.
Philips sought review in the district court of the Board's rulings as to written description, anticipation, obviousness, and priority as raised in motions 2, 4, and 5 and during the priority stage. Shortly after filing its complaint, Philips filed a motion for a claim construction hearing. The court then requested additional briefing on Philips' preliminary motions before the Board and both parties submitted their briefs accordingly. In its last brief before the district court, Philips asserted that if the court denied its motion for a claim construction hearing, "the parties would need to proceed to trial over the claims raised in Philips' complaint" because "Philips would introduce live testimony."
After the parties submitted their briefs, the court held a hearing to discuss the Board's rulings on Philips' preliminary motions. During that hearing, Philips' counsel advised the court that Philips "would be asking for a trial if there's no claim construction here" to relitigate the five motions before the Board and to argue no interference in fact. Counsel stated that Philips
After the hearing, the district court denied Philips' motion for a claim construction hearing and sua sponte dismissed the complaint with prejudice. The district court affirmed all of the Board's decisions, finding that the Board's "reasons for denying or dismissing each motion were grounded in the application of the Board's own procedures and regulations." The order did not address motion 2 before the Board or Philips' claim that the Board erred in determining that the Owen application had priority over the '751 patent. Both parties agree that even though the district court did not explain under which Federal Rule of Civil Procedure it dismissed the complaint, the dismissal was tantamount to sua sponte summary judgment. At the time of dismissal, the court had yet to issue a scheduling order.
Philips timely filed an appeal. We have...
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