Mahurkar v. C.R. Bard, Inc.
| Decision Date | 29 March 1996 |
| Docket Number | No. 95-1225,95-1225 |
| Citation | 79 F.3d 1572,38 USPQ2d 1288 |
| Parties | Dr. Sakharam D. MAHURKAR, Plaintiff-Appellee, v. C.R. BARD, INC., Davol Inc. and Bard Access Systems, Inc., Defendants-Appellants. |
| Court | U.S. Court of Appeals — Federal Circuit |
Raymond P. Niro, Niro, Scavone, Haller & Niro, Chicago, Illinois, argued for plaintiff-appellee. With him on the brief were John C. Jakes, Michael P. Mazza and Davis J. Sheikh.
H. Ross Workman, Workman, Nydegger & Seeley, Salt Lake City, Utah, argued for defendants-appellants. With him on the brief were Brent P. Lorimer and David R. Wright.
Before ARCHER, Chief Judge, MICHEL, and RADER, Circuit Judges.
Dr. Sakharam D. Mahurkar sued C.R. Bard, Inc., Davol Inc., and Bard Access Systems, Inc. (Bard) for infringing U.S. Patent No. 4,808,155 (the '155 patent). A jury found that the '155 patent is not invalid for obviousness. The jury also found that Bard infringed the '155 patent both literally and under the doctrine of equivalents. After a bench trial on damages, the district court awarded Dr. Mahurkar $4,139,194.76 in actual damages and prejudgment interest.
On appeal, the parties raised numerous issues to which this court gave full consideration. As to infringement, this court concludes substantial evidence supports the jury's findings. As to validity and damages, this court will address only two of the contentions. First, Bard appeals the trial court's grant of Dr. Mahurkar's motion for judgment as a matter of law at the close of the evidence on anticipation. Also, Bard appeals the district court's award of damages. Because the district court correctly granted Dr. Mahurkar's motion on anticipation, this court affirms in part. However, because the district court abused its discretion in awarding damages, this court vacates the award and remands for recalculation of a reasonable royalty.
The '155 patent discloses a simple double-lumen catheter. A double-lumen catheter simultaneously removes and restores fluids to the human body during a transfusion. To accomplish this mission, this flexible surgical instrument uses two channels--one to withdraw fluids, another to inject fluids.
Dr. Mahurkar created the claimed invention to treat chronic dialysis patients whose veins usually will no longer tolerate acute catheters. Dr. Mahurkar's invention does not traumatize sensitive veins, yet still supports maximum blood flow with a minimum catheter cross section. After a chronic patient's veins have deteriorated from frequent transfusions, this catheter permits insertion into a major vein--percutaneous insertion--without expensive cut-down surgery.
Dr. Mahurkar filed an initial patent application on his invention on October 24, 1983. After two continuations, the United States Patent and Trademark Office (PTO) issued the '155 patent on February 28, 1989. Claim 1 of the '155 patent reads:
a double lumen catheter having an elongated tube with a proximal cylindrical portion enclosing first and second lumens separated by an internal divider, the proximal end of said elongated tube connecting to two separate connecting tubes communicating with the respective first and second lumens, the first lumen extending from the proximal end of said elongated tube to a first opening at the distal end of said elongated tube, and the second lumen extending from the proximal end of said elongated tube to a second opening spaced in the longitudinal direction away from said first opening, said tube having a non-conical and non-tapered distal end portion having a cross-sectional area smaller than the cross-sectional area of said proximal cylindrical portion, and said distal end portion extending from said second opening and terminating in a blunt distal end to prevent the distal end of the catheter from traumatizing or becoming caught in the walls of a vessel into which the catheter is inserted. (Emphasis added.)
In May 1990, Dr. Mahurkar granted Bard a limited license under the '155 patent. This license limited Bard to non-hemodialysis applications. Dr. Mahurkar asserts that Bard made and sold infringing hemodialysis catheters in violation of that license. Specifically, Dr. Mahurkar claims that Bard's "Hickman I" and "Hickman II" hemodialysis catheters infringe the '155 patent.
Bard does not contest that the Hickman I catheter infringes the '155 patent. Bard also represented to its customers that the only difference between the Hickman I and the Hickman II was a mere "visual" change. Nonetheless, Bard asserts that the Hickman II does not infringe the '155 patent. Specifically, Bard alleges that the claimed '155 catheter end, or tip, differs from the Hickman II end. Bard argues that the end of the Hickman II is "beveled" and not "blunt," as required by the claims.
Bard also argues that the '155 patent is invalid under 35 U.S.C. § 102(a) (1994). In July 1983, Cook, Inc. published a nationwide catalog (the Cook catalog) disclosing a Cook Double Lumen Subclavian Hemodialysis Catheter. At the conclusion of the evidence at trial, Bard moved for judgment as a matter of law (JMOL) that the Cook catalog anticipated the '155 patent. Dr. Mahurkar cross-moved. The district court granted Dr. Mahurkar's motion for JMOL. According to the district court, no reasonable jury could find the Cook catalog anticipated claim 1 of the '155 patent.
The district court granted Dr. Mahurkar's motion for JMOL under Fed.R.Civ.P. 50(a)(1). Rule 50 states, in relevant part:
[I]f during a trial by jury a party has been fully heard on an issue and there is no legally sufficient evidentiary basis for a reasonable jury to find for that party on that issue, the court may determine the issue against that party and may grant a motion for judgment as a matter of law against that party with respect to a claim or defense that cannot under the controlling law be maintained or defeated without a favorable finding on that issue.
On appeal, this court must independently determine compliance with the requirements of Rule 50(a). Warrington v. Elgin, J & E Ry., 901 F.2d 88, 90 (7th Cir.1990). In evaluating a Rule 50(a) motion, this court must examine the evidence to determine whether a "jury could properly proceed to find a verdict for the party producing it, upon whom the onus of proof is imposed." Id. at 89. In this regard, this court must view the evidence in a light most favorable to the non-moving party. Id. at 90.
At trial, Bard sought to show that the Cook catalog anticipated claim 1 of the '155 patent. The catalog's July 1983 publication date preceded the filing of the '155 patent by about three months. The parties disputed only the status of the Cook catalog as prior art under 35 U.S.C. § 102(a). By challenging the validity of the '155 patent, Bard bore the burden of persuasion by clear and convincing evidence on all issues relating to the status of the Cook catalog as prior art. Innovative Scuba Concepts, Inc. v. Feder Indus., Inc., 26 F.3d 1112, 1115, 31 USPQ2d 1132, 1134 (Fed.Cir.1994).
Section 102(a) of title 35 defines one class of prior art. Lamb-Weston, Inc. v. McCain Foods, Ltd., 78 F.3d 540, 544-45 (Fed.Cir.1996). As a printed publication, the Cook catalog fits within some terms of 35 U.S.C. § 102(a). Section 102(a) also requires, however, that the catalog description appear before the invention.
In ex parte patent prosecution, an examiner may refer to a document published within one year before the filing date of a patent application as prior art. However, this label only applies until the inventor comes forward with evidence showing an earlier date of invention. Once the inventor shows an earlier date of invention, the document is no longer prior art under section 102(a).
Any suggestion that a document is prior art because it appears before the filing date of a patent ignores the requirements of section 102(a). Section 102(a) explicitly refers to invention dates, not filing dates. Thus, under section 102(a), a document is prior art only when published before the invention date. For the Cook catalog to constitute prior art, therefore, it must have been published before Dr. Mahurkar's invention date.
Resolution of this point turns on procedural rules regarding burdens of proof as well as several rules of law borrowed from the interference context. Bard offered into evidence at trial a document published about three months before the filing date of Dr. Mahurkar's patent disclosing each and every element of the claimed invention. Dr. Mahurkar then had the burden to offer evidence showing he invented the subject matter of his patent before the publication date of the However, Dr. Mahurkar offered evidence at trial to show that he invented the subject matter of the patent before publication of the Cook reference. He met his burden of production. Consequently, this court turns to an evaluation of the evidence offered by Dr. Mahurkar under the proper burden of persuasion in this infringement action and the rules of law relating to invention dates.
document. Innovative Scuba, 26 F.3d at 1115; see generally Director, Office of Workers' Compensation Programs v. Greenwich Collieries, --- U.S. ----, ---- - ----, 114 S.Ct. 2251, 2255-57, 129 L.Ed.2d 221 (1994) (discussing burden of persuasion and burden of production). Had Dr. Mahurkar not come forward with evidence of an earlier date of invention, the Cook catalog would have been anticipatory prior art under section 102(a) because Dr. Mahurkar's invention date would have been the filing date of his patent, Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1562,...To continue reading
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