Mentor H/S Inc. v. Medical Device Alliance Inc.

• Citation: 58 USPQ2d 1321,244 F.3d 1365
• Decision Date: 09 April 2001
• Docket Number: 00-1165,DEFENDANTS-CROSS,PLAINTIFFS-APPELLANTS,Nos. 99-1532,s. 99-1532
• Parties: (Fed. Cir. 2001) MENTOR H/S, INC. (NOW KNOWN AS MENTOR TEXAS INC.), AND SONIQUE SURGICAL SYSTEMS, INC.,, v. MEDICAL DEVICE ALLIANCE, INC., LYSONIX, INC., AND MISONIX, INC.,APPELLANTS
• Court: United States Courts of Appeals. United States Court of Appeals for the Federal Circuit

Page 1365

244 F.3d 1365 (Fed. Cir. 2001)

MENTOR H/S, INC. (NOW KNOWN AS MENTOR TEXAS INC.), AND SONIQUE SURGICAL SYSTEMS, INC., PLAINTIFFS-APPELLANTS, v. MEDICAL DEVICE ALLIANCE, INC., LYSONIX, INC., AND MISONIX, INC., DEFENDANTS-CROSS APPELLANTS.

Nos. 99-1532, 00-1165

United States Court of Appeals for the Federal Circuit

April 9, 2001

Appealed from: United States District Court for the Central District of California

[Copyrighted Material Omitted]

[Copyrighted Material Omitted]

[Copyrighted Material Omitted]

Frank E. Scherkenbach, Fish & Richardson, P.C., of Menlo Park, California, argued for plaintiffs-appellants. With him on the brief were Robert E. Hillman, Fish & Richardson, of Boston, Massachusetts; and Richard J. Anderson and John A. Dragseth, Fish & Richardson, of Minneapolis, Minnesota.

Matthew D. Powers, Weil, Gotshal & Manges Llp, of Menlo Park, California, argued for defendants-cross appellants. With him on the brief were Steven S. Cherensky, Christopher J. Cox, and Nancy K. Raber.

Before Mayer, Chief Judge, Lourie and Schall, Circuit Judges.

Lourie, Circuit Judge.

Judge William D. Keller

Mentor H/S, Inc. appeals from the decision of the United States District Court for the Central District of California, following a jury verdict of direct, contributory, and inducement of infringement of Mentor's U.S. Patent 4,886,491 by Medical Device Alliance, Inc. ("MDA"), Lysonix, Inc., and Misonix, Inc. (collectively, "the defendants"). The court (1) granted the defendants' motion for judgment as a matter of law ("JMOL") that a best mode violation occurred; (2) granted Misonix's motion for JMOL that it did not infringe Mentor's patent; (3) granted a conditional new trial (in the event that this court reverses its JMOL on the best mode issue) for anticipation, obviousness, inequitable conduct and contributory infringement by all defendants; and (4) denied Mentor's motion for enhanced damages and attorney fees. Mentor H/S, Inc. v. Med. Device Alliance, Inc., No. CV 97-2431-WDK (C.D. Cal. June 10, 1999) (granting JMOL on the best mode ground and non-infringement by Misonix, and denying motion for damages and fees) ("Mentor I"); Mentor H/S, Inc. v. Med. Device Alliance, Inc., No. CV 97-2431-WDK (C.D. Cal. Nov. 19, 1999) (granting new trial motions) ("Mentor II"). Mentor challenges each of these rulings on appeal. The defendants cross-appeal the district court's denial of their motion for a new trial on claim construction and request a judgment of non-infringement based on their proposed claim construction.

Because substantial evidence supports the jury's verdict that the inventors did not violate the best mode requirement of 35 U.S.C. §§ 112 (1994), first paragraph, we reverse the district court's grant of JMOL on that issue. We also reverse the court's grant of a new trial on anticipation, obviousness, and inequitable conduct because the jury's verdicts on those issues were not against the great weight of the evidence. We further conclude that substantial evidence supports the jury's verdict that Misonix induced infringement of and contributorily infringed Mentor's patent and accordingly reverse the court's JMOL of non-infringement with respect to Misonix. We also reverse the district court's grant of a new trial on contributory infringement by all defendants. However, we affirm the court's denial of Mentor's motion for enhanced damages and attorney fees.

Finally, we reject the defendants' cross-appeal from the court's denial of their motion for a new trial on claim construction and dismiss their remaining arguments for, inter alia, JMOL on additional best mode issues and a new trial on inducement of infringement by Lysonix and MDA. Accordingly, we affirm-in-part and reverse-in-part.

BACKGROUND

A. The Patent

Mentor is the exclusive licensee of the '491 patent, which relates to a method for ultrasonic assisted liposuction. In the claimed method, fatty tissue is melted by heat produced from ultrasonic vibrations and then removed by suction. Misonix manufactures the ultrasonic device, "Lysonix 2000," that is used in the accused method. MDA and its subsidiary, Lysonix, buy the devices from Misonix and sell them to doctors who perform the allegedly infringing method. Claim 1, the only claim at issue, reads as follows:

1. A method of removing animal fatty tissue from a patient in vivo comprising the steps of:

inserting an aspirating probe into the body in an area between the flesh and the muscle in the area of the fatty tissue;

ultrasonically vibrating said probe at substantially high frequencies and low amplitudes, creating localized tissue separation and frictional heat;

melting at least some of said fatty tissue by said localized heat, so as to provide more efficient removal of said fatty tissue;

irrigating the area surrounding the probe;

emulsifying said fatty tissue;

and aspirating the emulsified fatty tissue by applying suction, whereby a slimmer profile is provided.

'491 patent, col. 6, ll. 35-49.

B. District Court Litigation

Mentor sued each defendant for direct, contributory, and inducement of infringement, asserting that such infringement was willful. The jury returned a verdict that each of the defendants had willfully engaged in all three kinds of infringement. The jury also found by special verdict that the defendants did not prove by clear and convincing evidence that the patent was invalid for anticipation or obviousness, or that the patent was unenforceable due to the inventors' failure to disclose material information during prosecution. The defendants challenged the jury's verdict in a series of post-trial motions asserting patent invalidity, unenforceability, and non-infringement.

The court granted defendants' motion for JMOL on the best mode ground for failure to disclose a preferred frequency stabilizing circuit. Mentor I at 2-4. During cross examination, one of the inventors, Tulio Parisi, testified as follows:

Q: So you agree it was important to have that circuitry that locked the frequency? You are not changing your deposition testimony then?

A: I'm saying that when we applied the probe to a different level of adipose tissue, or fat tissue, fatty tissue, at times if we didn't have the amplitude or the power level set, we would not get the type of frictional heat that we desired.

Q: My question, Mr. Parisi, is that you thought that circuit which stabilized the frequency was important to make your ultrasonic liposuction device function the way you wanted it to; isn't that true?

A: At the time, yes.

Id. at 2-3. The district court found, based solely on that brief testimony, that the defendants had shown by clear and convincing evidence that Parisi did not adequately disclose in the patent the frequency stabilization circuit and hence that he violated the best mode requirement. Id. at 4.

The district court also granted the defendants' post-trial motions for a conditional new trial on anticipation and obviousness, stating that the jury's verdict on validity was against the great weight of the evidence. Mentor II at 3. Specifically, the district court found that U.S. Patent 3,589,363 teaches every limitation claimed in the '491 patent in its step-by-step description of a device used to remove unwanted soft tissue. Id. The '363 patent relates to a phacoemulsifier device especially suitable for cataract removal. '363 patent, col. 1, ll. 42-44. At trial, the defendants asserted that the '363 patent inherently teaches that unwanted tissue such as fat is melted because heat is expelled by electrical-to-mechanical energy conversion in the device's hand piece. Mentor contested this inherent anticipation argument by presenting testimony from Dr. Langer that the device in the '363 patent generated less heat than that produced in the claimed method. The defendants sought to rebut this testimony on cross examination as follows:

Q: And you believe it's probably about the same amount of heat, but you haven't tested it; right?

A: Right. Wait a second. I didn't say it was probably the same amount of heat.

Q: That's what I heard, Dr. Langer.

A: That's not what I said.

***

Q: And if it's the same amount of heat, then it would melt at least some of said fatty tissue, because that's what Parisi teaches, right?

A: Yes.

Q: And you have no reason to believe in the context of the Banko/Kelman '363 patent that it's any less heat than what Parisi generates, do you?

A: Yes, I do.

Q: And what's that basis?

A: Well, the Parisi system is a much larger, more powerful system, larger probe.

Q: And does the Banko/Kelman patent teach that the probe has to be any particular size?

A: I believe at that time, the probe sizes were generally much smaller.

Q: Does the Banko/Kelman patent teach that the probe needs to be any particular size?

A: I don't recall that it does. On the other hand, if you use some of the criteria that you have been using, maybe it does.

The jury nonetheless found the patent not invalid.

The court also found that the Cavitron 1978 and 1980 510(k) FDA applications identified each element necessary for finding anticipation, including the use of the devices for liposuction. Mentor II at 3. The FDA applications described the use of the Cavitron USA devices to fragment brain tumor tissue and suggested other possible applications for those devices, one of which was subcutaneous lipectomy, or liposuction.

The defendants also asserted in their post-trial motions that the '491 patent is unenforceable for inequitable conduct on the ground that the applicants failed to disclose material prior art to the United States Patent and Trademark Office ("PTO") during prosecution with intent to deceive. The jury determined that the applicants did not fail to disclose material information to the PTO, and thus did not reach the question of intent to deceive. The district court concluded that the '363 patent was material and that the jury's verdict was against the great weight of the...