Medtronic, Inc. v. Cardiac Pacemakers, Inc.

• Decision Date: 23 November 1983
• Docket Number: No. 83-820,83-820
• Citation: 220 USPQ 97,721 F.2d 1563
• Parties: MEDTRONIC, INC., and Med-Rel, Inc., Appellants, v. CARDIAC PACEMAKERS, INC., Appellee. Appeal
• Court: U.S. Court of Appeals — Federal Circuit

Page 1563

721 F.2d 1563

220 U.S.P.Q. 97

MEDTRONIC, INC., and Med-Rel, Inc., Appellants, v. CARDIAC PACEMAKERS, INC., Appellee.

Appeal No. 83-820.

United States Court of Appeals,

Federal Circuit.

Nov. 23, 1983.

John D. Gould, of Minneapolis, Minnesota, argued for appellants; with him on brief were Douglas A. Strawbridge and Robert C. Beck, Minneapolis, Minn.

Timothy J. Malloy, Chicago, Ill., argued for appellee; with him on brief were Bradley J. Hulbert, Chicago, Ill., and Orrin M. Haugen, Minneapolis, Minn.

Before MARKEY, Chief Judge, BENNETT, Circuit Judge, and COWEN, Senior Circuit Judge.

MARKEY, Chief Judge.

Appeal from a judgment of the District Court of Minnesota holding U.S. Patents 3,391,697 (Greatbatch), 3,833,005 (Wingrove) and 3,901,247 (Walmsley) invalid, and finding no infringement. We modify and affirm.

Background

Medtronic, Inc. and Med-Rel, Inc. (Medtronic) own the asserted patents directed to implantable cardiac pacemakers. Greatbatch describes and claims a pacemaker which is "runaway inhibited", i.e., one that does not stimulate the heart above a predetermined rate. Wingrove describes and claims a digital programmable pacemaker which can be reprogrammed by radio frequency signals after implantation. Walmsley describes and claims a pacemaker having an easily interpreted indication of battery condition.

Medtronic sued Cardiac Pacemakers, Inc. (CPI) for infringement of Greatbatch claims 1, 8, 10, 11, and 12, Wingrove claims 1, 4, 5, 7, 8, 9, 10, and 23, and Walmsley claim 13. CPI denied infringement and counterclaimed, asserting that the patents were invalid because the inventions of Greatbatch and Wingrove lacked novelty and because all the claimed inventions would have been obvious.

On January 19, 1983, Judge Devitt issued an 11 page Memorandum and Order, published at 555 F.Supp. 1214, finding the claimed inventions of Greatbatch and Wingrove novel, and holding that the "runaway inhibit system" of Greatbatch, the "remotely programmable, digitally timed and controlled pacer" of Wingrove, and "the Walmsley patent" would have been obvious under 35 U.S.C. Sec. 103. ¹ Though the Memorandum says the court did not "reach the question of infringement", it includes a finding that the claims at issue are not infringed, apparently on the theory that invalid claims cannot be the basis of liability for infringement.

Issue

The dispositive issue is whether the district court correctly held that the inventions before it, as set forth in the asserted claims of the Greatbatch, Wingrove, and Walmsley patents, would have been obvious under Sec. 103. ²

OPINION

Medtronic's appeal rests on assertions that the findings underlying the appealed judgment are clearly erroneous and on the contention that words and phrases appearing in the Memorandum establish the presence of fundamental errors of law in ignoring and misapplying the statutory presumption of validity provided by 35 U.S.C. Sec. 282, ³ and in applying an improper test for determining the obviousness/nonobviousness issue. Though the Memorandum, as discussed below, contains language and phrases unsupported by the statute, Title 35 U.S.C., that alone does not require reversal where, as here, the decisional approach has not been shown to have been influenced or controlled thereby, and the result of the trial has not been shown, on the entire record, to have been reached on the basis of either clearly erroneous findings or on an actual misapplication of the law.

(1) The Memorandum and Order

Medtronic vigorously argues error in the Memorandum statement that "[c]ourts should scrutinize combination patent claims with a care proportioned to the difficulty and improbability of finding invention in an assembly of old elements...." We cannot construe that statement, taken from the opinion in Sakraida v. Ag Pro, Inc., 425 U.S. 273, 281, 96 S.Ct. 1532, 1537, 47 L.Ed.2d 784 (1976) and Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147, 152, 71 S.Ct. 127, 130, 95 L.Ed. 162 (1950) as a rule of law applicable broadly to patent cases because virtually every claimed invention is a combination of old elements, and, as Judge Devitt noted, virtually every patent can be described as a "combination patent". Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 218 USPQ 871, 880 (Fed.Cir.1983). Further, the Court has itself recognized the patentability of combinations of old elements. United States v. Adams, 383 U.S. 39, 51-52, 86 S.Ct. 708, 714-715, 15 L.Ed.2d 572, 148 USPQ 479, 483 (1966) ("Despite the fact that each of the elements of the Adams battery was well known in the prior art, to combine them as did Adams required that a person reasonably skilled in the prior art must ignore" long-accepted factors.).

There is neither a statutory distinction between "combination patents" and some other, never defined type of patent, nor a reason to treat the conditions for patentability differently with respect to "combination patents". It but obfuscates the law to posit a non-statutory, judge-created classification labeled "combination patents". Richdel, Inc. v. Sunspool Corp., 714 F.2d 1573, 219 USPQ 8, 12 (Fed.Cir.1983). That the misstatement did not in this case lead to an erroneous application of the law, however, is indicated in part by the Memorandum statement that the "elements presumptively were combined in an inventive manner so as to render the combination patentable". Though the record would have been more clear without the reference to "combination patents", and "inventive manner", it cannot be said that the appealed judgment was in this case so influenced thereby as to require reversal.

Medtronic's contention that the statutory presumption of validity was misapplied is based on the Memorandum statement that the "presumption of validity is weakened, if not completely destroyed, by proof of pertinent prior non-considered art". The district court was there relying on language appearing in circuit opinions then serving as guidance to the district courts in the circuit. We have since explained that the presumption of validity is not weakened or destroyed where merely pertinent non-considered prior art is introduced, but that the offering party is more likely to carry the burden of persuasion imposed by 35 U.S.C. Sec. 282 when art more pertinent than that considered is introduced. SSIH Equipment S.A. v. ITC, 718 F.2d 365, 218 USPQ 678, 687 (Fed.Cir.1983); Stratoflex, supra, 218 USPQ at 875-76.

Citing Adams, supra, 383 U.S. at 48, 86 S.Ct. at 712, and Clark Equipment Co. v. Keller, 570 F.2d 778, 785 (8th Cir.1978), Judge Devitt stated: "Recognizing the presumption of validity, we must satisfy ourselves in light of the evidence before us that the patents in suit [sic patented inventions] possess the essential characteristics of utility, novelty and nonobviousness." It is of course true that to be patentable an invention must be useful, novel, and nonobvious. The cited cases do not hold, however, that a court may merely "recognize" the presumption and then proceed to "satisfy" itself that an invention possesses such characteristics. The statute, 35 U.S.C. Sec. 282 requires that the court begin by presuming that the invention has those characteristics. To do otherwise is to ignore the statute and to place on the patentee a non-statutory burden of proving validity. The court must be satisfied of something quite different, namely that the party challenging validity has carried its burden of overcoming the presumption. In this regard, this court has said that a court need not declare a patent valid, but need only in a proper case declare that the party challenging validity has not carried that burden. Environmental Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 218 USPQ 865, 871, n. 9 (Fed.Cir.1983). As discussed, infra, the conclusion correctly reached on the entire record (that the asserted claims are invalid) carries with it a determination that CPI carried its burden of overcoming the presumption, and the misstatement concerning the role of the court did not constitute reversible error in this case.

On review of the record and independent analysis of the obviousness issue, infra, we conclude that none of the statements concerning the presumption of validity so influenced the appealed judgment as to require reversal.

The contention that an improper test was used for determining obviousness is based on the Memorandum statement that "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 " (emphasis ours). Medtronic says that statement indicates an improper reliance on the teachings of the patent in suit, i.e., that the test applied was one of hindsight. That approach would have been error. Orthopedic Equipment Co. v. United States, 702 F.2d 1005, 1012, 217 USPQ 193, 199 (Fed.Cir.1983); W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540 at 1552, (Fed.Cir., 1983). CPI, relying on conjecture, says the "subject matter of the patented invention" must have referred to the problem to be solved, not the solution set forth in the claims. The quoted expression, taken literally, is an improper statement of a test for obviousness, insofar as it rests on the notion that it is possible for those skilled in the art to think about an actual invention before the inventor makes it. The expression is at best ambiguous, particularly in light of another Memorandum statement in which hindsight was specifically eschewed. Absent other bases for the appealed judgment, it could not be said that a correct test was here applied. We review judgments, however, not statements in memoranda. Chore-Time Equipment, Inc. v. Cumberland Corp., 713 F.2d 774, 218 USPQ 673, 677 (Fed.Cir.1983). As appears infra, the judgment is so thoroughly supported in the record and in other portions of the Memorandum, as to preclude reversal on the...