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The Mere Fact That a Document Is Distributed Without a Legal Obligation of Confidentiality Is Not in and of Itself Sufficient to Render the Document a “Printed

08-1003
March 31, 2009

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Last Month at the Federal Circuit - April 2009

Judges: Mayer, Dyk (author), Huff (District Judge sitting by designation)

[Appealed from: D. Del., Judge Robinson]

In Cordis Corp. v. Boston Scientific Corp., Nos. 08-1003, -1072 (Fed. Cir. Mar. 31, 2009), the Federal Circuit affirmed the district court’s denial of Boston Scientific Corporation’s (“Boston Scientific”) and Cordis Corporation’s (“Cordis”) motions for JMOL or, in the alternative, a new trial. The Federal Circuit also reversed the district court’s dismissal without prejudice of Cordis’s claims that Boston Scientific’s Taxus Liberté stent infringed the asserted claims of U.S. Patent Nos. 4,739,762 (“the ’762 patent”) and 5,895,406 (“the ’406 patent”), and remanded with instructions to dismiss those claims with prejudice.

The patents-in-suit generally relate to intravascular stents. Cordis sued Boston Scientific, alleging that several of Boston Scientific’s stents infringed the ’762 and ’406 patents. Boston Scientific counterclaimed, alleging that several of Cordis’s stents infringed U.S. Patent No. 5,922,021 (“the ’021 patent”). A jury returned two separate verdicts of infringement: (1) Boston Scientific infringed claims 1 and 23 of the ’762 patent and claim 2 of the ’406 patent; and (2) Cordis infringed claim 36 of the ’021 patent. The jury also found that the claims-at-issue were not invalid.

Regarding Cordis’s claims, the Court affirmed the district court’s construction of the “wherein” clause in claim 23 of the ’021 patent. Claim 36, which Cordis was found to have infringed, depends from claim 23. Cordis argued that the same “wherein” clause appears in both claims 1 and 23 of the ’021 patent, and that the “wherein” clause of claim 1 had been construed during prosecution to exclude 180-degree out-of-phase designs. Cordis’s stent uses a 180-degree out-of-phase design. The Court, however, explained that claims 1 and 23 use different numbering systems so that, for example, the “first expansion strut of the second expansion strut pair in the second expansion column” is not the same strut in claim 23 as in claim 1. The Court then stated that the question is whether the prosecution history requires that, despite its plain language, the “wherein” clause of claim 23 be construed to use the same numbering system as claim 1. The Court found that this is not required. Cordis contended that the examiner used only the numbering system of claim 1 when allowing both claims 1 and 23, and that the examiner necessarily assumed that claim 23 used the same numbering system as claim 1. The Court stated that “the examiner did not say so, and we cannot simply suppose that the claims were allowed based on an assumed identity of numbering systems.” Slip op. at 12. The Court also stated that the plain language of claim 23 cannot be overcome by unclear prosecution history, and that although no figure in the ’021 patent illustrates a 180-degree out-of-phase design, a patent is not confined to its disclosed embodiments.

The Court also rejected Cordis’s argument that the jury erred in concluding that the “corners” limitation of claim 36 was satisfied under the DOE. First, the Court stated that the district court properly found that Boston Scientific presented sufficient expert testimony that Cordis’s stent met the “corners” limitation under the DOE under the function-way-result test. Second, the Court rejected Cordis’s argument that the jury’s finding of infringement vitiated the “corners” limitation. The district court construed “corners” as “a place where two surfaces meet to form an angle.” Cordis alleged that the circular arcs of its stent cannot “form an angle,” as required in the district court’s construction. The Court agreed that the circular arcs of Cordis’s stent are equivalent to the “corners” in claim 36 and do not “render[] the pertinent limitation meaningless” or “effectively eliminate that element in its entirety.” Id. at 15 (alteration in original) (citations omitted).

The Court then concluded that the district court properly declined after trial to adopt a new construction of certain terms in the claims of the ’021 patent. The Court explained that Cordis raised this argument for the first time in its motion for JMOL more than a year after the jury’s infringement verdict and therefore waived the right to present this argument.

The Court affirmed the district court’s holding that claim 23 of the ’021 patent is not indefinite. The Court found no basis for Cordis’s argument that claim 23 is indefinite unless the “wherein” clause is construed to exclude 180-degree out-of-phase designs.

The Court rejected Cordis’s argument that the jury erred in finding that claim 36 of the ’021 patent was not invalid for obviousness. Cordis asserted that the ’021 patent was not entitled to the priority date of its provisional application because the provisional application did not provide a sufficient written description of the patent’s limitations, and that regardless of whether the ’021 patent was entitled to the earlier priority date, there were several prior art patents that rendered claim 36 obvious. The Court explained that Boston Scientific presented uncontradicted expert testimony that the provisional application provided sufficient written description for claim 36 and that the prior art patents cited by Cordis would be unlikely to be combined to create the connectors of claim 36. Thus, the Court concluded that the jury could properly find that the ’021 patent was entitled to the earlier priority date and that the district court properly concluded that there was substantial evidence that prior art patents cited by Cordis did not render claim 36 obvious.

Regarding Boston Scientific’s claims, the Court affirmed the district court’s finding that two monographs prepared by Dr. Palmaz, the inventor of Cordis’s ’762 patent, were not prior art printed publications under 35 U.S.C. § 102(b) and affirmed the district court’s grant of SJ to Cordis that the claims of the ’762 patent are not invalidated by the monographs. In 1980, Dr. Palmaz prepared a paper, referred to as the “1980 monograph.” He gave copies to hospital colleagues and, pursuant to agreements, to two companies while attempting tocommercialize his stent technology. Neither agreement required confidentiality. In 1983, Dr. Palmaz revised the paper, which became the “1983 monograph.” He gave copies of both monographs to a technician from whom Dr. Palmaz was seeking fabrication assistance, and when he joined a university’s faculty, he gave copies of the 1983 monograph to university colleagues and to the university for a research proposal. Dr. Palmaz applied for the ’762 patent in 1985.

The Court stated that the question is “whether the distribution to a limited number of entities without a legal obligation of confidentiality renders the monographs printed publications under § 102(b).” Id. at 21. The Court noted that “[w]here professional and behavioral norms entitle a party to a reasonable expectation” that information will not be copied or further distributed, “we are more reluctant to find something a ‘printed publication.’” Id. (alteration in original) (citation omitted). The Court concluded that the distribution to academic and research colleagues did not render the monographs prior art printed publications. The Court recognized the importance of “preserv[ing] the incentive for inventors to participate in academic presentations or discussions” by noting that professional norms may support expectations of confidentiality. Id. (alteration in original) (citation omitted). The Court found that the record contains clear evidence that such academic norms gave rise to an expectation that disclosures will remain confidential.

The Court also concluded that distribution to the two commercial entities did not render the monographs prior art printed publications. There was no claim that the two commercial entities provided any express agreement to keep the document confidential; one entity’s agreement did not discuss the entity’s confidentiality obligations, and the other entity’s agreement specifically disclaimed such obligations. The Court, however, found that there was sufficient evidence to support a conclusion that there was an expectation of confidentiality between Dr. Palmaz and each of the two commercial entities. The entities had kept their copies confidential, whether or not they were legally obligated to do so, and the district court noted that there was no evidence that the entities would have distributed, or in fact did distribute, the document outside of the company. There was also no showing that these or similar commercial entities had made similar documents in the past available to the public. “The mere fact that there was no legal obligation of confidentiality—all that was shown here—is not in and of itself sufficient to show that Dr. Palmaz’s expectation of confidentiality was not reasonable.” Id. at 23.

The Court affirmed the district court’s denial of Boston Scientific’s motion for JMOL that claim 2 of the ’406 patent is anticipated and invalid. The Court rejected Boston Scientific’s argument that the functional language following “such that” in the claim cannot operate as a claim limitation to distinguish the ’406 patent over the prior art. The Court stated that the jury could properly find that the “such that” claim language is a limitation that barred a finding of anticipation. The Court also rejected Boston Scientific’s argument that, even if the “such that” functional language limits claim 2 to stents “having axial flexibility,” as recited in the claim, the evidence demonstrated that the ’762 patent disclosed such axial flexibility. The Court affirmed the district court’s conclusion that there was sufficient evidence for the jury to find that the ’762 patent did not anticipate claim 2 of the ’406 patent.

The Court rejected Boston Scientific’s argument that their stents do not infringe claims 1 and 23 of the ’762 patent under the “thin-walled” limitation of these claims. First, the Court rejected Boston Scientific’s construction of the term “thin-walled” and concluded that the district court’s construction was proper. Second, the Court stated that the district court properly excluded Boston Scientific’s claim construction argument before the jury. Boston Scientific had sought to use the prosecution history of the ’762 patent to show that Cordis admitted that stents whose thicknesses were within a particular range were not “thin-walled.” The Court noted that it is improper to argue claim construction to the jury since the risk of confusing the jury is high when experts opine on claim construction. Third, the Court stated that the district court properly found that Cordis presented substantial evidence to support the jury’s infringement verdict.

The Court rejected Boston Scientific’s argument that their stents do not infringe claims 1 and 23 of the ’762 patent under the “substantially parallel” limitation of these claims. The Court stated that since Boston Scientific did not timely raise the argument that the district court erred in not construing the term “parallel,” the argument was waived. The Court also stated that substantial evidence supported the jury’s verdict that Boston Scientific’s stent meets the “substantially parallel” limitation of the claims. The Court further stated that the district court’s exclusion of a portion of the inventor’s testimony was within its discretion. The Court explained that inventor testimony as to subjective intent is irrelevant to the issue of claim construction, and the inventor of the asserted patent also had no special expertise regarding the alleged patent infringement.

The Court rejected Boston Scientific’s argument that their stents do not infringe claim 2 of the ’406 patent. The Court stated that Boston Scientific did not timely raise, and thus waived, the argument that the district court erred in not construing the term “wave.” The Court also stated that substantial evidence supported the jury’s verdict that Boston Scientific’s stent meets the limitations of claim 2.

The Court reversed the district court’s dismissal without prejudice of Cordis’s claims that Boston Scientific’s Taxus Liberté stent infringed the asserted claims of the ’762 and ’406 patents, and remanded with instructions to dismiss the claims with prejudice. Cordis failed to prove that the Taxus Liberté stent had a nexus to the United States. The Court explained that the question of whether the Taxus Liberté stent had a nexus to the United States was an element of Cordis’s liability claims rather than a jurisdictional requirement. Because a failure to prove allegations in a complaint requires a decision on the merits, not a dismissal for lack of subject matter jurisdiction, the Court held that the district court’s dismissal of Cordis’s infringement claims regarding the Taxus Liberté stent should have been with prejudice.