Showing Harm to Exclusive Licensee Is Insufficient for Grant of Permanent Injunction
August 18, 2008
Last Month at the Federal Circuit - September 2008
Judges: Mayer, Bryson, Gajarsa (author)
[Appealed from: W.D. Okla., Judge Leonard]
In Voda v. Cordis Corp., Nos. 07-1297, -1343 (Fed. Cir. Aug. 18, 2008), the Federal Circuit affirmed the district court’s denial of a permanent injunction as well as claim construction and validity of U.S. Patent Nos. 5,445,625 (“the ’625 patent”), 6,083,213 (“the ’213 patent”), and 6,475,195 (“the ’195 patent”). The Court affirmed-in-part and reversed-in-part the district court’s finding of infringement. Lastly, the Court vacated and remanded the district court’s finding of willfulness because the finding was based on an erroneous jury instruction.
Dr. Jan K. Voda is the owner of the ’625, ’213, and ’195 patents. The patents are all directed to cardiac guide catheters used in interventional cardiology. A cardiac guide catheter is a long, thin plastic tube with a preformed tip. To use the guide catheter, a wire is first inserted to straighten the preformed tip. The catheter is then inserted into the femoral artery and advanced to the aorta. Once the catheter is positioned correctly in the heart, the wire is removed, allowing the preformed tip to return to its preformed shape, so that the tip of the catheter is inserted into the coronary ostium while another portion of the catheter rests against the opposing wall of the aorta to provide support.
Voda sued Cordis Corporation (“Cordis”) for infringement of the ’625, ’213, and ’195 patents. The jury found that Cordis willfully infringed all asserted claims of the patents-in-suit and that the asserted claims of the ’213 patent are valid. The jury also awarded Voda reasonable royalty damages. The district court denied Cordis’s motion for JMOL of noninfringement and invalidity of the ’213 patent, and granted Voda’s motion for enhanced damages and attorneys’ fees. The district court, however, denied Voda’s request for a permanent injunction. Cordis appealed the district court’s construction of the term “along a line” in the ’213 patent and the denial of JMOL. Cordis also appealed the jury’s finding of willfulness. Voda cross-appealed the denial of a permanent injunction, as well as the district court’s construction of the “substantially straight leg” limitation of the ’213 and ’195 patents.
On appeal, the Federal Circuit first addressed the claim construction of the ’213 patent. Cordis argued that the district court’s construction of the limitation “along a line” in claim 1 was erroneous because it did not require that “a straight portion of the catheter engage the wall of the aorta.” Slip op. at 9. In accordance with the principles set forth in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), the Court examined the words of the claims, the specification, and the prosecution history.
Cordis first argued that “straight” was inherent in the word “line.” The Court disagreed because claims depending from claim 1 specifically required a “substantially straight leg” and claim 1 did not expressly recite a “straight” or “substantially straight” portion. The Court also found that claim 1 refers to the position of the catheter as it is used in the human body rather than its shape in its resting state. Cordis further argued that the specification of the ’213 patent had expressly limited the catheter to a straight contact portion. The Court rejected this argument, pointing to specific statements in the specification that did not require a straight contact portion. The Court also disagreed with Cordis’s assertion that Voda had disclaimed a straight contact portion during prosecution. The Court read an amendment to claim 1 as distinguishing the prior art based on the length of the engagement with the ascending aorta during use, rather than the shape of the contact portion of the catheter. Accordingly, the Federal Circuit affirmed the district court’s construction of “along a line.”
Cordis also appealed the jury’s finding that claims 1 through 3 of the ’213 patent were not invalid.
The only dispute on appeal was whether a reasonable jury could have found that neither a group of Amplatz references nor a group of Bourassa references disclosed the third limitation of claims 1 through 3, which requires “engaging the aorta inner wall with a portion of the catheter body such that when the distal end of the catheter is positioned in the ostium, the catheter body engages the opposite wall of the aorta along a line having a length of about 1.5 cm or greater.” Slip op. at 5. With respect to the Amplatz references, the Court found that Voda had not conceded such a disclosure. As a result, the Federal Circuit affirmed the district court’s denial of JMOL that claims 1-3 of the ’213 patent were anticipated by the Amplatz references.
The Court similarly disagreed with Cordis that its experts’ testimony established that the length of the contact between the Bourassa catheter and the wall of the aorta was 1.5 cm or more. Rather, the Federal Circuit found that a reasonable jury could conclude that Cordis failed to show that the Bourassa reference disclosed the third limitation of claims 1-3 by clear and convincing evidence. Accordingly, the Court affirmed the district court’s denial of JMOL that claims 1-3 of the ’213 patent were anticipated by the Bourassa reference.
The Court turned next to the jury’s finding of infringement of the ’625, ’213, and ’195 patents under the DOE. First, Cordis argued that prosecution history estoppel barred infringement of the ’213 patent. During prosecution of claim 4, Voda amended the claim language to add a requirement that catheterization must be performed with catheters having a “first substantially straight leg.” Thus, because Voda made a narrowing amendment to the claim, Voda was presumed to have disclaimed methods that do not involve catheters with a first substantially straight leg. The Court found that Voda failed to make any argument to overcome that presumption. The Federal Circuit therefore reversed the district court’s finding of infringement of claim 4 (and dependent claim 5) under the DOE.
Cordis also argued that claim 1 of the ’625 patent and all the claims of the ’195 patent were not infringed under the DOE. In particular, Cordis argued that the “second straight portion” limitation of claim 1 of the ’625 patent and the “first substantially straight leg” limitation of all claims of the ’195 patent had no equivalent in the accused products. The Court rejected this argument, finding that Voda’s experts had testified that such equivalents did exist in the accused products. Accordingly, the Federal Circuit found that substantial evidence supported the jury’s findings of infringement of the ’625 and ’195 patents.
The Court then reviewed the district court’s finding of willfulness. The district court issued its jury instruction on the standard for willful infringement before the issuance of the opinion in In re Seagate, 497 F.3d 1360 (Fed. Cir. 2007) (en banc). The district court instructed the jury that “[w]hen a person becomes aware that a patent may have relevance to his or her activities, that person has a duty to exercise due care and to investigate whether or not his or her activities or proposed activities infringe any valid, enforceable claim of the patent.” Slip op. at 25 (alteration in original) (quoting Voda v. Cordis Corp., No. 03-CV-1512, slip op. at *46 (W.D. Okla. May 25, 2006) (Jury Instructions)). Although Cordis did not object to this jury instruction at trial, Cordis sought a new trial on willfulness under the new Seagate standard. Under the law of the regional circuit, the 10th Circuit, the Court reviewed the district court’s jury instruction de novo because it was based on a change in the law that arose after trial.
Although the parties agreed that the jury instruction was erroneous under Seagate, Voda argued that the error was harmless because the accused products were intentional copies of the Voda catheters. The Federal Circuit disagreed, finding that there was evidence that Cordis had attempted to design around Voda’s patents. The Court found that a jury instruction in accord with the Seagate objective recklessness standard might have changed the jury’s verdict on willfulness. Accordingly, the Court vacated the finding of willfulness and remanded for a determination of whether Cordis’s infringement was willful under the Seagate standard. The Court did not agree with Cordis, however, that a new trial on willfulness would require a new trial on infringement.
Lastly, the Federal Circuit examined the district court’s denial of a permanent injunction. In denying the permanent injunction, the district court found that Voda had not identified any irreparable injury to him. Rather, Voda had attempted to prove irreparable injury by alleging irreparable harm to his exclusive licensee. Voda argued that the district court erred in adopting a categorical rule that precludes a patent owner from proving its entitlement to an injunction by showing irreparable harm to its exclusive licensee.
The Court did not agree that the district court’s denial conflicted with the traditional four-factor test for issuing a permanent injunction set forth in eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006). The Court found that, while patent owners that license their patents rather than practice them may be able to satisfy the four-factor test, “[n]othing in eBay eliminates the requirement that the party seeking a permanent injunction must show that ‘it has suffered an irreparable injury.’” Slip op. at 28 (quoting eBay, 547 U.S. at 393). The Court found no clear error in the district court’s ruling that Voda failed to show that he was injured as a result of Cordis’s infringement. Accordingly, the Federal Circuit affirmed the district court’s denial of a permanent injunction.