Failure to Notify the District Court of a Change in Law Constituted a Waiver on Appeal
December 18, 2008
Last Month at the Federal Circuit - January 2009
Judges: Michel, Friedman, Walker (District Judge sitting by designation, author)
[Appealed from: S.D.N.Y., Chief Judge Castel]
In Rentrop v. Spectranetics Corp., No. 07-1560 (Fed. Cir. Dec. 18, 2008), the Federal Circuit affirmed the district court’s judgment in favor of Dr. Peter Rentrop, finding that The Spectranetics Corporation (“Spectranetics”) waived its challenge to the jury instructions on obviousness, that the jury’s verdict of infringement was supported by legally sufficient evidence, and that the district court’s determination that Spectranetics did not establish an inequitable conduct defense was not an abuse of discretion or based on clearly erroneous findings of fact.
Dr. Rentrop, inventor and owner of U.S. Patent No. 6,673,064 (“the ’064 patent”), sued Spectranetics for infringement of the ’064 patent. The ’064 patent is directed to an excimer laser catheter, which is used to perform angioplasty procedures. A jury found that Spectranetics’s accused products infringed claim 1 of the ’064 patent, that the ’064 patent was not invalid, and that Dr. Rentrop was the sole inventor of the ’064 patent. After trial, the district court denied Spectranetics’s JMOL on infringement, rejected Spectranetics’s defense of inequitable conduct, and awarded $500,000 in damages to Dr. Rentrop. Spectranetics appealed.
On appeal, the Federal Circuit first addressed Spectranetics’s argument that the ’064 patent was invalid for obviousness. Spectranetics argued that claim 1 of the ’064 patent was so clearly obvious based on the prior art presented to the jury that the only possible explanation for the jury not finding the claim to be obvious was that the district court gave a rigid “teaching, suggestion, or motivation” jury instruction contrary to the Supreme Court’s decision in KSR International Co. v. Teleflex, Inc., 550 U.S. 398 (2007). Dr. Rentrop, on the other hand, argued that Spectranetics waived its argument based on KSR because Spectranetics failed to bring its obviousness argument to the district court’s attention before entry of judgment. The Federal Circuit agreed with Dr. Rentrop. The Court reasoned that “[w]here possible, every legal argument should be presented first to the trial court.” Slip op. at 6. It explained that KSR was decided almost four months before the district court entered judgment, giving Spectranetics ample time to bring that decision to the district court’s attention.
The Federal Circuit held that “when there is a relevant change in the law before entry of final judgment, a party generally must notify the district court; if the party fails to do so, it waives arguments on appeal that are based on that change in the law.” Id. Applying these principles, the Court noted that Spectranetics did not bring KSR to the attention of the district court and therefore had waived its arguments based on KSR. It thus declined to disturb the jury’s determination that the ’064 patent was not invalid. Although the Federal Circuit held that Spectranetics waived its arguments based on KSR, it noted that the jury instructions on obviousness appeared to be consistent with KSR. The Court reviewed the jury instructions and found that even if Spectranetics had not waived its arguments, it would not have been entitled to relief from the jury’s finding of nonobviousness.
The Court then addressed Spectranetics’s appeal from the district court’s denial of JMOL on noninfringement. Spectranetics’s noninfringement argument centered on the term “tip” in claim 1 of the ’064 patent. Spectranetics argued that the hard and stiff “tip” of its products was not covered by the claim, and that the testimony of Dr. Rentrop’s infringement expert, Dr. Edward Sinofski, on this issue was not based on the district court’s construction of “tip.” The Federal Circuit disagreed. It found that Dr. Sinofski’s identification of the tip of Spectranetics’s accused products and his explanation of how the tip read on claim 1 of the ’064 patent were consistent with the district court’s claim construction. Accordingly, the Court concluded that Spectranetics was not entitled to JMOL of noninfringement.
Finally, the Court addressed Spectranetics’s appeal of the district court’s determination that Spectranetics failed to establish the defense of inequitable conduct. Spectranetics argued that the district court erred by not finding inequitable conduct based on Rentrop’s nondisclosure or inadequate disclosure of several items of prior art, and his minimization of Spectranetics’s role in the development of the invention disclosed in the ’064 patent. The Court disagreed, finding that the district court already considered Spectranetics’s arguments and addressed them in an opinion that was well reasoned. Moreover, the Court determined that Spectranetics failed to provide the compelling evidence of materiality and intent to deceive required to establish that the district court abused its discretion or based its determination on clearly erroneous findings of fact. Accordingly, the Federal Circuit affirmed the district court’s rejection of the inequitable conduct defense.