Court Affirms Holding of Willful Infringement of Catheter Patent
September 10, 2001
Last Month at the Federal Circuit - October 2001
Judges: Linn (author), Bryson, and Gajarsa
In Advanced Cardiovascular Systems, Inc. v. Medtronic, Inc., No. 00-1417 (Fed. Cir. Sept. 10, 2001), the Federal Circuit affirmed a district court’s SJ that claim 3 of Advanced Cardiovascular Systems, Inc.’s (“ACS”) U.S. Patent No. 5,451,233 (“the ‘233 patent”) was valid and enforceable, and that Medtronic, Inc. (“Medtronic”) had willfully infringed the ‘233 patent.
The ‘233 patent claim at issue recites an elongated balloon dilation catheter with a guidewire/lumen configuration that enables a rapid exchange of the catheter when needed. The disputed issue was the physical connection between the balloon catheter and the guidewire. The ‘233 patent has, as a preferred embodiment, the guidewire running through the inside of the balloon, giving a cylindrical shape and a “coaxial” configuration. In contrast, Medtronic’s accused catheter has a guidewire that runs along the outside of the balloon, termed a “side-by-side” design.
After losing in the district court, Medtronic appealed. At issue was whether claim 3 of the ‘233 patent encompassed a “side-by-side” design or was limited to the coaxial design. The district court had determined, and the Federal Circuit confirmed, that claim 3 was not limited to the coaxial design. The Federal Circuit looked first to the claim language itself, concluding that claim 3 on its face encompassed either configuration. Next, the Federal Circuit looked to the specification and file history, noting that Medtronic had incorrectly supported its position by relying on statements made in the prosecution history of related applications.
Medtronic also failed to support its motion for SJ of inequitable conduct because it had provided no independent showing of intent to deceive. In affirming this decision, the Federal Circuit reiterated that there was no abuse of discretion to forbid discovery of settlement negotiations in view of Medtronic’s failure to prove either materiality or intent. Finally, Medtronic was denied its motion for a new trial. While Medtronic had attempted to have opinions of counsel admitted for two related patents, Medtronic had withheld the opinion regarding the ‘233 patent under the attorney-client privilege. The Federal Circuit noted that the opinions regarding the two related patents were properly excluded, particularly in view of the assertion of attorney-client privilege for the opinion regarding the patent-in-suit. Therefore, the Federal Circuit confirmed that no grounds for a new trial existed and confirmed the enhancement of damages by thirty percent for willfulness.