Medrad, Inc. v. Tyco Healthcare Group Lp, 06-1082.

• Decision Date: 16 October 2006
• Docket Number: No. 06-1082.,06-1082.
• Citation: 466 F.3d 1047
• Parties: MEDRAD, INC., Plaintiff-Appellant, v. TYCO HEALTHCARE GROUP LP, Mallinckrodt Inc., Liebel-Flarsheim Co., and Nemoto Kyorindo Co., Ltd., Defendants-Appellees.
• Court: U.S. Court of Appeals — Federal Circuit

466 F.3d 1047

MEDRAD, INC., Plaintiff-Appellant, v. TYCO HEALTHCARE GROUP LP, Mallinckrodt Inc., Liebel-Flarsheim Co., and Nemoto Kyorindo Co., Ltd., Defendants-Appellees.

No. 06-1082.

United States Court of Appeals, Federal Circuit.

October 16, 2006.

W. Thomas McGough, Jr., Reed Smith LLP, of Pittsburgh, PA, argued for plaintiff-appellant. On the brief were Robert J. Walters and Charles Hawkins, Sutherland Asbill & Brennan, LLP, of Washington, DC. Of counsel on the brief were Frederick H. Colen and Barry J. Coyne, Reed Smith LLP, of Pittsburgh, PA; and Arthur Wineburg, Akin Gump Strauss Hauer & Feld, LLP, of Washington, DC. Of counsel was Gregory L. Bradley, Medrad, Inc., of Indianola, PA.

J. Robert Chambers, Wood, Herron & Evans, L.L.P, of Cincinnati, OH, argued for defendants-appellees. With him on the brief was Theodore R. Remaklus.

Before MICHEL, Chief Judge, ARCHER, Senior Circuit Judge, and LINN, Circuit Judge.

LINN, Circuit Judge.

Medrad, Inc. appeals from a final judgment granting the motion of Tyco Healthcare Group LP, Mallinckrodt Inc., Liebel-Flarsheim Co., and Nemoto Kyorindo Co., Ltd. (collectively "Tyco") for summary judgment of invalidity of U.S. Reissue Patent No. 37,602 ('602 reissue patent). Medrad, Inc. v. Tyco Healthcare Group, LP, 391 F.Supp.2d 374 (W.D.Pa.2005). Because we conclude that the defect that formed the basis for the '602 reissue patent was within the plain meaning of 35 U.S.C. § 251, we reverse and remand.

I. BACKGROUND

The '602 reissue patent relates to patient infusion systems for use with magnetic resonance imaging systems. There are two predecessor patents to the '602 reissue patent, both of which were assigned to Medrad. The first predecessor patent was U.S. Patent No. 5,494,036 ('036 patent), which issued on February 27, 1996. On February 23, 1998, Medrad filed an application for reissue of the '036 patent and submitted reissue declarations stating that the inventors had claimed less than they had a right to claim (an "underclaiming" error). During prosecution of the reissue, Medrad narrowed the scope of various claims (correcting an "overclaiming" error) and corrected inventorship in addition to correcting the underclaiming error. Medrad did not submit supplemental reissue declarations regarding the overclaiming or inventorship errors as required by 37 C.F.R. § 1.175. That reissue application issued as U.S. Reissue Patent No. 36,648 ('648 reissue patent) and is the second predecessor patent to the '602 reissue patent.

On April 25, 2000, Medrad filed a complaint with the U.S. International Trade Commission alleging illegal importation of devices that infringed the '648 reissue patent. On motion for summary judgment, the administrative law judge ("ALJ") initially found that the '648 reissue patent was invalid due to Medrad's failure to file supplemental reissue declarations regarding the overclaiming and inventorship errors that were ultimately corrected during prosecution. The ALJ's initial decision became the final determination of the International Trade Commission, and the investigation was terminated.

Before the ALJ's initial determination became final, Medrad filed an application for reissue of the '648 reissue patent seeking to correct its failure to submit supplemental declarations during prosecution of the '648 reissue patent. That application resulted in the '602 reissue patent, which is the subject of this appeal. The '602 reissue patent and the '648 reissue patent have identical specifications, drawings, and claims; the only difference is that Medrad filed supplemental declarations during prosecution of the '602 reissue patent that allegedly corrected the failure to do so during prosecution of the '648 reissue patent.

On October 24, 2001, Medrad filed a complaint in district court against Tyco alleging infringement of the '602 reissue patent. Medrad and Tyco filed cross motions for summary judgment regarding the validity of the '602 reissue patent. Medrad, 391 F.Supp.2d at 376. Tyco argued that the reissue was defective under 35 U.S.C. § 251 because it did not correct one of four statutorily identified errors: a defect in the specification, a defect in the drawings, or an error in either claiming too much or too little in the patent. Id. The court construed section 251 as requiring "that some error in the specification, drawings, or claim of the patent be corrected as a result of the reissue process." Id. at 378. Because the error that Medrad corrected was "procedural" and not an error in the specification, drawings, or claims of the '648 reissue patent, the court granted Tyco's motion, denied Medrad's motion, dismissed all other pending motions as moot, and entered final judgment holding the '602 reissue patent invalid. Id. at 382-83.

On appeal, Medrad challenges the district court's interpretation of 35 U.S.C. § 251 and its invalidity finding based on that interpretation. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1).

II. DISCUSSION

A. Standard of Review

We review a district court's grant of summary judgment of invalidity de novo. Baxter Int'l, Inc. v. COBE Labs., Inc., 88 F.3d 1054, 1058 (Fed.Cir.1996). Summary judgment is proper only if there are no genuine issues of material fact and the movant is entitled to judgment as a matter of law. See Fed.R.Civ.P. 56(c); Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 250, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). The scope of 35 U.S.C. § 251 is a question of statutory construction that we review without deference. NTP, Inc. v. Research In Motion, Ltd., 418 F.3d 1282, 1314 (Fed.Cir.2005). "Whether the statutory requirement of `error' [in section 251] has been met is an issue of law which we review de novo." Mentor Corp. v. Coloplast, Inc., 998 F.2d 992, 994 (Fed.Cir. 1993).

B. Analysis

Medrad argues that the district court erred in concluding that 35 U.S.C. § 251 does not extend to reissues based on defects in inventor declarations. Specifically, Medrad argues that section 251 does not require there to be an error in the specification, drawings, or claims of the patent, but rather encompasses any inadvertent error that results in underclaiming or overclaiming. Medrad cites In re Bennett, 766 F.2d 524 (Fed.Cir.1985), Brenner v. State of Israel, 400 F.2d 789 (D.C.Cir. 1968), Fontijn v. Okamoto, 518 F.2d 610 (C.C.P.A.1975), and A.F. Stoddard & Co. v. Dann, 564 F.2d 556 (D.C.Cir.1977), as cases that have interpreted section 251 to include reissues based on errors that were not literally in the specification, drawings, or claims of the patent. Medrad argues that by failing to file supplemental declarations, the '648 reissue patent was invalid, and thus claimed less than it had a right to claim within the meaning of section 251.

Tyco counters that section 251—though remedial in nature—is expressly limited to correcting defects in the specification, drawings, or claims, and that to allow correction of any defect that results in invalidity would effectively read out those requirements. Tyco distinguishes Bennett, Brenner, Fontijn, and Stoddard and argues that these cases do not support the proposition that section 251 allows for a reissue in which there were no changes made to the specification, drawings, or claims of the underlying patent. Alternatively, Tyco argues that even if a failure to submit supplemental declarations is an error that is correctable under section 251, the district court's decision should be affirmed because the supplemental declarations submitted in the '602 reissue patent do not comply with 37 C.F.R. § 1.175. Medrad replies that Tyco's alternative argument based on 37 C.F.R. § 1.175 was not considered below and thus should not be considered on appeal.

Section 251 sets forth the requirements for obtaining a reissue patent and provides, in relevant part:

Whenever any patent is, through error without any deceptive intention, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent.

35 U.S.C. § 251 (emphasis added). The parties frame the issue on appeal as whether the highlighted phrase requires that the error occur in the actual language of a patent's claims—as Tyco argues—or refers broadly to errors that result in patent rights with more or less scope than would have been provided but for the error—as Medrad argues.

"In construing a statute ... we begin by inspecting its language for plain meaning. If the words are unambiguous, no further inquiry is usually required." Camargo Correa Metais, S.A. v. United States, 200 F.3d 771, 773 (Fed.Cir.1999) (citation omitted). In our interpretation of the statute, we give words their ordinary, contemporary, common meaning unless Congress has indicated otherwise, NTP, 418 F.3d at 1314-15, and "with a view to their place in the overall statutory scheme." Tyler v. Cain, 533 U.S. 656, 662, 121 S.Ct. 2478, 150 L.Ed.2d 632 (2001) (quoting Davis v. Mich. Dept. of Treasury, 489 U.S. 803, 809, 109 S.Ct. 1500, 103 L.Ed.2d 891 (1989)). We note that neither of the parties has directed us to any legislative history that we should consider. However, we have held that "[i]n enacting [section 251], Congress provided a statutory basis for correction of `error.' The statute is remedial in nature, based on fundamental principles of equity and fairness, and should be construed liberally." In re Weiler, 790 F.2d 1576, 1579 (Fed.Cir. 1986).

To begin, we note that the cases cited by Medrad are inapposite to the interpretation at issue in this appeal. In Bennett, we held that a patentee could submit a supplemental declaration to support...