Medtronic, Inc. v. Cardiac Pacemakers, Inc.

• Court: U.S. District Court — District of Minnesota
• Writing for the Court: Orrin M. Haugen, Minneapolis, Minn., and Timothy J. Malloy, Chicago, Ill., for defendant
• Citation: Medtronic, Inc. v. Cardiac Pacemakers, Inc., 555 F.Supp. 1214 (D. Minn. 1983)
• Decision Date: 19 January 1983
• Docket Number: No. Civ. 3-80-617.,Civ. 3-80-617.
• Parties: MEDTRONIC, INC., and Med-Rel, Inc., Plaintiffs, v. CARDIAC PACEMAKERS, INC., Defendant.

555 F. Supp. 1214

MEDTRONIC, INC., and Med-Rel, Inc., Plaintiffs, v. CARDIAC PACEMAKERS, INC., Defendant.

No. Civ. 3-80-617.

United States District Court, D. Minnesota, Third Division.

January 19, 1983.

John D. Gould and Douglas A. Strawbridge, Minneapolis, Minn., for plaintiffs.

Orrin M. Haugen, Minneapolis, Minn., and Timothy J. Malloy, Chicago, Ill., for defendant.

DEVITT, Senior District Judge.

In this bench tried patents infringement suit between Minnesota corporations, each of which is engaged in the manufacture and sale of electromedical devices, plaintiffs Medtronic, Inc., and Med-Rel, Inc., claim that defendant Cardiac Pacemakers, Inc., has infringed three of their patents involving circuitry in implantable heart pacers and seek injunctive relief and damages. Defendant denies infringement and claims the patents are invalid for lack of novelty and for obviousness under 35 U.S.C. §§ 102, 103.

The patents in suit, labeled by the parties as "Greatbatch," "Wingrove" and "Walmsley," after the inventors, are more specifically identified as follows:

              U.S
                 Named       Patent      Claims      Date     Date
                Inventor      No.       Involved     Filed    Issued   Title
                Wilson       3,391,697  1, 8, 10,    9/20/65  7/9/68   Runaway
                Greatbatch              11, 12                         Inhibited
                                                                       Pacemaker
                Robert C.    3,833,005  1, 4, 5, 7,  7/26/71  9/3/74   Compared
                Wingrove                8, 9, 10,                      Count
                                        23                             Digitally
                                                                       Controlled
                                                                       Pacemaker
                Frank R.     3,901,247  13           1/13/72  8/26/75  End of Life
                Walmsley                                               Increased
                                                                       Pulse Width
                                                                       and Rate
                                                                       Change
                                                                       Apparatus
                

Jurisdiction lies under 28 U.S.C. § 1338(a). The case was tried to the court over a seven day period beginning on September 7, 1982. Twelve witnesses were heard, including the three named inventors and expert witnesses for both parties. Arguments have been heard and briefs lodged.

We deal here with small battery powered electronic pulse generators used to artificially stimulate damaged or diseased hearts. It is plaintiffs' position that defendant's pacemakers infringe upon the three patents now owned by plaintiffs. Plaintiffs claim that defendant's Microlith-P pacer, and others like it, embody a rate-limiting circuit equivalent to Greatbatch, a digitally controlled, remotely programmable circuit equivalent to Wingrove, and a battery voltage sensing circuit equivalent to Walmsley. As stated, defendant denies infringement and asserts that the three patents are invalid either for lack of novelty or for obviousness. Because of our disposition of the validity issue, we do not reach the question of infringement.

I

We are governed by pertinent legal standards. Each of the patents in suit is presumed to be valid. 35 U.S.C. § 282; Woodstream Corp. v. Herters, Inc., 446 F.2d 1143, 1149 (8th Cir.1971). A party challenging a patent can rebut this presumption by presenting "substantial" evidence of invalidity. 35 U.S.C. § 282; Clark Equipment Co. v. Keller, 570 F.2d 778, 795 (8th Cir.), cert. denied, 439 U.S. 825, 99 S.Ct. 96, 58 L.Ed.2d 118 (1978). Particularly strong rebuttal evidence is proof of pertinent prior nonconsidered art. Ralston Purina Co. v. General Foods Corp., 442 F.2d 389, 390 (8th Cir.1971) ("presumption of validity is weakened, if not completely destroyed, by proof of pertinent prior non-considered art").

Recognizing the presumption of validity, we must satisfy ourselves in light of the evidence before us that the patents in suit possess the essential characteristics of utility, novelty and nonobviousness. United States v. Adams, 383 U.S. 39, 48, 86 S.Ct. 708, 712-13, 15 L.Ed.2d 572 (1966); Clark Equipment Co. v. Keller, 570 F.2d at 785. Since CPI has urged lack of novelty (anticipation) and obviousness as bases for invalidity, placing particular emphasis on obviousness, it is these aspects of the patents that we will examine. Before proceeding further, it is relevant for purposes of determining invalidity that the Greatbatch and Wingrove patents comprise elements or techniques that were known in the prior art. As such they are combination patents whose elements presumptively were combined in an inventive manner so as to render the combination patentable.¹

The requirement of novelty or nonanticipation derives from 35 U.S.C. § 102. If the claimed invention was known, used, patented or described in a printed publication before the date of the invention or more than one year before the date of application for patent, the invention is not novel. 35 U.S.C. § 102(a), (b).

When a combination patent is challenged, the test for anticipation is whether the prior art discloses all of the elements of the claimed combination, or their mechanical equivalents, functioning in substantially the same way to produce the same result. Greening Nursery Co. v. J & R Tool & Mfg. Co., 376 F.2d 738, 740 (8th Cir.1967). It is the totality of the combined elements that is important. Even though no single element is new, if the combination is new and it performs or produces a new or different function or operation, the invention is novel. Lincoln Engineering Co. v. Stewart-Warner Corp., 303 U.S. 545, 549, 58 S.Ct. 662, 664, 82 L.Ed. 1008 (1938); Maloney-Crawford Tank Corp. v. Sauder Tank Co., 465 F.2d 1356, 1366 (10th Cir.1972); Gruendler Crusher & Pulverizer Co. v. Williams Crusher & Pulverizer Co., 496 F.Supp. 1385, 1388 (E.D.Mo.1980).

An invention found to be novel may nevertheless be invalid for reasons of obviousness. 35 U.S.C. § 103; Reinke Mfg. Co. v. Sidney Mfg. Corp., 594 F.2d 644, 646 (8th Cir.1979); L. & A. Prods. Inc. v. Britt Tech. Corp., 365 F.2d 83, 87 (8th Cir.1966); Skee-Trainer, Inc. v. Garelick Mfg. Co., 361 F.2d 895, 899 (8th Cir.1966). If the improvements of the patented invention over the prior art at the time of invention would have been obvious to a person having ordinary skill in the pertinent art, the patent is invalid. 35 U.S.C. § 103. The United States Supreme Court has afforded guidance for determining Section 103 obviousness in Graham v. John Deere Co., 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966). According to Graham, factual inquiries must be made to ascertain (1) the scope and content of the prior art; (2) the differences between the patented device and the prior art at the time of invention; and (3) the level of ordinary skill in the art at the time of invention.² Id. at 17, 86 S.Ct. at 693-94; Span-Deck, Inc. v. Fab-Con, Inc., 677 F.2d 1237, 1241 (8th Cir.1982).

In determining the scope of the prior art, the Supreme Court's observation in Graham v. John Deere is relevant to the present case. The Court there noted that

Technology ... has advanced — and with remarkable rapidity in the last 50 years. Moreover, the ambit of applicable art in given fields of science has widened by disciplines unheard of half a century ago. It is but evenhanded application to require that those persons granted the benefit of a patent monopoly be charged with an awareness of these changed conditions.

383 U.S. at 19, 86 S.Ct. at 694-95. The Court made this statement in a 1966 case in which the patented device was a farm plow. The patents in suit involve electronic circuits, many of the components of which have been developed only within the last several decades. The body of electronics knowledge has grown prodigiously in this time and the ever-increasing complexity and expanding application of this knowledge is dumbfounding, especially to the layman.

In the present case it would be myopic to limit the scope of the prior art to prior cardiac pacemaker circuitry. Prior art includes not only earlier devices and publications of a particular area, but also includes similar devices whether or not in areas related to the patented device. Skee-Trainer, Inc. v. Garelick Mfg. Co., 361 F.2d at 898. The scope of the prior art is defined by the nature of the problem confronting the would-be inventor. Graham v. John Deere Co., 383 U.S. at 35, 86 S.Ct. at 702-03; Republic Indus. v. Schlage Lock Co., 592 F.2d 963, 974-75 (7th Cir.1979). If the elements, purposes or techniques of other fields are relevant and useful to the problem solved by the patented device, those fields are analogous and should be considered within the scope of the prior art. Mott Corp. v. Sunflower Indus., 314 F.2d 872, 878 (10th Cir.1963); George J. Meyer Mfg. Co. v. San Marino Electronics Corp., 422 F.2d 1285, 1288 (9th Cir.1970). The inventor is presumed to know and is chargeable with knowledge of all applicable prior art. L.S. Donaldson Co. v. LaMaur, Inc., 299 F.2d 412, 420 (8th Cir.), cert. denied, 371 U.S. 815, 83 S.Ct. 27, 9 L.Ed.2d 57 (1962); Michigan Magnetics, Inc. v. Nortronics Co., 245 F.Supp. 401, 403 (D.Minn.1965).

Once the scope and content of the prior art are established, and the differences between the invention and the prior art are ascertained, the obviousness of the invention is measured by the knowledge of a hypothetical person skilled in the art who has thought about the subject matter of the patented invention in light of that art. Flour City Architectural Metals v. Alpana Aluminum Prods., Inc., 454 F.2d 98, 108 (8th Cir.1972); see Reinke Mfg. Co. v. Sidney Mfg. Corp., 594 F.2d at 652; Republic Indus. v. Schlage Lock Co., 592 F.2d at 975. Improvements obvious to those skilled in the art are not entitled to protection. Airlite Plastics Co. v. Plastilite Corp., 526 F.2d 1078, 1082 (8th Cir.1975), cert. denied, 425 U.S. 938, 96 S.Ct. 1671, 48 L.Ed.2d 179 (19...